(471) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 2
[Docket No.:PTO-T-2005-014]
RIN 0651-AB56
Miscellaneous Changes to
Trademark Trial and Appeal Board Rules
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office
(Office) is amending the Trademark Rules of Practice (trademark rules)
to require plaintiffs in Trademark Trial and Appeal Board (Board) inter
partes proceedings to serve on defendants their complaints or claims;
to utilize in Board inter partes proceedings a modified form of the
disclosure practices included in the Federal Rules of Civil Procedure;
and to delete the option of making submissions to the Board in CD-ROM
form. In addition, certain amendments are being made to clarify rules,
conform the rules to current practice, and correct typographical errors
or deviations from standard terminology.
DATES: Effective Date: This rule is effective November 1, 2007 except the
amendments for the following rules are effective August 31, 2007: 2.105(a);
2.113(a), and removal of (e); 2.116(g); 2.118; 2.119(b)(6); 2.120(d)(1);
2.122(d)(1); 2.126(a)(6), removal of (b) and redesignation of (c) and (d)
as (b) and (c); 2.127(a) and (c); 2.129(a); 2.133(a) and (b); 2.142(e)(1);
2.173(a); and 2.176.
Applicability to pending cases: The amendment to rule
2.116(g), which makes the Board standard protective order applicable in
all inter partes cases applies to all cases pending before the Board as
of the effective date of that amendment, except for cases in which the
Board's standard protective order, or some other protective order, has
already been applied or approved by the Board. The following amendments
also apply to all cases pending before the Board as of their effective
date: 2.105(a); 2.113(a), and removal of (e); 2.118; 2.119 (b)(6);
2.120(d)(1); 2.126(a)(6), removal of (b) and redesignation of (c) and
(d) as (b) and (c); 2.127(a) and (c); 2.133(a) and (b); 2.173(a); and
2.176. All other amendments to the rules apply in cases commenced on or
after the effective dates of the respective amendments.
FOR FURTHER INFORMATION CONTACT: Gerard F. Rogers,
Trademark Trial and Appeal Board, by telephone at (571) 272-4299, by
mail addressed to Trademark Trial and Appeal Board, P.O. Box 1451,
Alexandria, VA, 22313-1451, attention Gerard F. Rogers, or by facsimile
to (571) 273-0059, marked to the attention of Gerard F. Rogers.
Information may also be obtained via the Federal eRulemaking Portal.
See the Federal eRulemaking Portal web site
(http://www.regulations.gov) for the full text of the notice of
proposed rule making that preceded this final rule, and the full text
of comments received in response to the notice of proposed rule making.
SUPPLEMENTARY INFORMATION: The amended rules will
increase the efficiency of the processes for commencing inter partes
cases, and take account of the Board's deployment in recent years of
electronic filing options and the increased availability and use of
facsimile and e-mail as methods of communication between parties
involved in inter partes cases. Also, the amended rules will increase
the efficiency by which discovery and pretrial information is exchanged
between parties to inter partes cases, by adopting a modified form of
the disclosure practice that is uniformly followed in the federal
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district courts. These practices have been found in the courts to
enhance settlement prospects and to lead to earlier settlement of
cases; and for cases that do not settle, disclosure has been found to
promote greater exchange of information, leading to increased
procedural fairness and a greater likelihood that cases eventually
determined on their merits are determined on a fairly created record.
The amendments also include minor modifications necessary to make
corrections or updates to certain rules and conform those rules to
current practice.
As of November 1, 2007, the following notice originally published in
the USPTO Official Gazette on January 15, 1994, at 1159 TMOG 14, will
no longer have effect: "Notice Regarding Inapplicability of December
1, 1993 Changes in Federal Rules of Civil Procedure to TTAB Cases."
I. Commencement of Proceedings
Plaintiffs in Board proceedings include an opposer that files a notice
of opposition against an application, a petitioner that files a
petition for cancellation of a registration, and a concurrent use
applicant whose concurrent use application sets forth details about the
concurrent use applicant's claim of entitlement to a concurrent use
registration. The former process by which a plaintiff in a Board
proceeding filed notice of its complaint (or claim of right to a
concurrent use registration) required the plaintiff to prepare as many
copies of its complaint (or claim of right, i.e., concurrent use
application) as there would be defendants in the action. The plaintiff
would then file the requisite copies with the original, for subsequent
forwarding by the Board to the defendant or defendants. Occasionally,
before the Board could forward the copies to the defendant or
defendants, the plaintiff would engage in additional correspondence
with the Board, to provide the Board with updated correspondence
address information the plaintiff had uncovered in its investigation of
the adverse applications, registrations or marks, particularly in
cancellation and concurrent use proceedings.
Under the amended trademark rules, the initiation of a Board proceeding
will be more efficient, because a plaintiff will serve copies directly
on defendants. Use of a direct service approach recognizes that
plaintiffs and defendants often are in contact before the plaintiff
files its complaint or claim, and also recognizes that continuation of
direct communication is vital both for promoting possible settlement of
claims and for ensuring cooperation and procedural efficiency in the
early stages of a proceeding.
In recent years, the Board has deployed its ESTTA system, the
Electronic System for Trademark Trials and Appeals, so that virtually
all filings can be submitted electronically.
In addition, more and more parties to Board proceedings are choosing to
utilize fax or e-mail options for communicating with each other during
an inter partes proceeding, either in lieu of using the mail or in
combination with use of the mail.
Under the amended trademark rules, an opposer or petitioner will file
its complaint with the Board and is required to concurrently serve a
copy of its complaint (notice of opposition or petition for
cancellation), including any exhibits, on the owner of record, or when
applicable the attorney or domestic representative designated in the
defending application or registration, or in assignment records
regarding the application or registration. A concurrent use applicant,
however, will not have to serve copies of its application on any
defending applicant, registrant or common law mark owner until
notification of commencement of the concurrent use proceeding is issued
by the Board, as discussed below.
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A plaintiff filing a notice of opposition must serve the owner of the
application, according to Office records, or the attorney or domestic
representative of the owner, if Office records designate that an
attorney or domestic representative should receive correspondence for
the owner of the application. A plaintiff filing a petition for
cancellation must serve the owner of the registration, according to
Office records, or the domestic representative of the owner, if Office
records designate that a domestic representative should receive
correspondence for the owner of the registration. A plaintiff filing a
petition for cancellation is not expected to serve any attorney who may
have represented the registrant before the Office in the prosecution of
the application that resulted in issuance of the registration. (It is
noted, however, that an attorney who was designated as a domestic
representative during prosecution of an application is considered by
the Office to continue in such role unless the appointment as domestic
representative was revoked or a different domestic representative was
subsequently appointed.) Whether a plaintiff should serve the owner
directly, an attorney, or a domestic representative depends on what
Office records provide as the correspondence address.
To determine the correspondence address of record for an applicant or
registrant, the plaintiff must check the Trademark Applications and
Registrations Retrieval (TARR) system at the following web address:
http://tarr.uspto.gov. (This system also is accessible via links from
the Office's main web site.) A plaintiff in an opposition or
cancellation proceeding need only serve a copy of its notice of
opposition or petition for cancellation to the correspondence address
of record. The TARR display of information about a particular
application or registration also includes an active link to assignment
(including changes of name) information, if any exists in the Office's
assignments database. For questions about correspondence address
information in TARR, or about assignment records and determining the
current owner of an application or registration, plaintiffs may contact
the Board's customer service representatives at the main telephone
number for the Board, listed on the web site
http://www.uspto.gov/main/contacts.htm.
A plaintiff in an opposition or cancellation is not required to serve a
copy of its notice of opposition or petition for cancellation to any
address other than the address listed in the TARR system. A plaintiff
may wish to serve a courtesy copy on any party at any address the
plaintiff may have reason to believe is more current than the address
for that party listed in Office records. A plaintiff may wish to serve
a courtesy copy on any party the plaintiff believes has an ownership
interest in the relevant application or registration (e.g., an assignee
or survivor of merger that had not recorded the document of transfer in
the Office but was known to the plaintiff) at the correspondence
address known to the plaintiff. It is generally in a plaintiff's
interest to have the real party in interest apprised of the existence
of the Board opposition or cancellation proceeding, so that any
judgment eventually obtained will be binding on the correct party.
As for service obligations of a concurrent use applicant (i.e., the
plaintiff in a concurrent use proceeding), current practice requires
such party to provide, for forwarding by the Board, as many copies of
its application as are necessary to forward one to each person or
entity listed in the concurrent use application as an exception to the
concurrent use applicant's rights (i.e., excepted parties, the
defendants in the concurrent use proceeding). Existing practice
requires the concurrent use applicant to provide correspondence address
information for excepted parties, even if the excepted parties do not
own applications or registrations for marks listed in the TARR system.
The amended trademark rules continue the requirement that the
concurrent use applicant provide correspondence address information for
excepted parties. The new rules dispense with the requirement that the
concurrent use applicant file copies of its claim of right to a
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concurrent use registration, i.e., copies of its concurrent use
application, for service by the Board on each excepted party. Under the
amended trademark rules, the concurrent use applicant must promptly
serve a copy of its application on each of the excepted parties
following its receipt of a notice from the Board that the concurrent
use proceeding has been instituted.
All plaintiffs, including concurrent use applicants, bear the same
service obligations. Specifically, they must serve copies by one of the
methods provided in Trademark Rule 2.119, 37 C.F.R. § 2.119.
Plaintiffs are neither required nor expected to follow the provisions
of Rules 4, 4.1 or 5 of the Federal Rules of Civil Procedure or, for
defendants located outside the United States, any international
convention regarding service of process. The parties may agree to use
e-mail to communicate with each other and for forwarding of service
copies. A plaintiff, however, may not serve its complaint or concurrent
use application on a defendant by e-mail unless the defendant has
agreed with the plaintiff to accept such service, notwithstanding that
the defendant may have authorized the Office to communicate with it by
e-mail.
If a service copy is returned to plaintiff as undeliverable, plaintiff
must notify the Board within ten (10) days of receipt of the returned
service copy, or of any notice indicating that the service copy could
not be delivered. Notification to the Board of failure of service may
be provided by any means available for filing pleadings, motions, etc.,
keeping in mind that business with the Office is generally to be
conducted in writing. Therefore, notice of failure of service may be
provided, for example, by written notice mailed to the Board, or by
appropriate filing through ESTTA. A plaintiff is under no obligation to
search for current correspondence address information for, or
investigate the whereabouts of, any defendant the plaintiff is unable
to serve. However, notice to the Board of failure of service must
include, if known, any new address information for the defendant whose
service copy was returned to the plaintiff or reported to be
undeliverable. For example, if a service copy returned by the United
States Postal Service because of an expired forwarding order
nonetheless lists the addressee's new address, then that must be
reported to the Board. Similarly, if the plaintiff whose attempt at
service has been unsuccessful discovers a new address for a defendant
through independent means or voluntary investigation, then it must
report the results of its investigation in its notice to the Board of
the failure of service. In any case in which a plaintiff notifies the
Board that a service copy sent to a defendant was returned or not
delivered, including any case in which the notification includes a new
address for the defendant discovered by or reported to the plaintiff,
the Board will effect service.
The Board will, after a notice of opposition or petition for
cancellation is filed, or after a concurrent use application is
published for opposition and found free of any opposition, send notice
to all parties to the proceeding, noting the filing of the complaint,
or publication of the concurrent use application. The notice will set
the due date for an answer, and the discovery and trial schedule.
Notification from the Board may be sent by e-mail when a party has
provided an e-mail address. A party providing an e-mail address
includes a plaintiff providing an e-mail address when filing any paper
by ESTTA or with a complaint delivered by other means, an applicant
that authorized the Office to communicate with it by e-mail when it
filed its application, and any registrant whose registration file
record includes such authorization. In any proceeding, an undelivered
notice from the Board of the commencement of a proceeding may result in
notice by publication in the Official Gazette, available via the
Office's web site (http://www.uspto.gov).
II. Adoption of a Disclosure Model
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In 1993, significant amendments to the Federal Rules of Civil Procedure
(federal rules) implemented a system requiring parties litigating in
the federal courts to, among other things, disclose certain information
and/or documents and things without waiting for discovery requests, and
to meet and confer to discuss settlement options and plans for
disclosure and discovery if settlement were not possible (disclosure
regime). Individual district courts were permitted to opt out of this
disclosure regime.
In 2000, the federal rules were further amended, eliminating the option
for individual courts to opt out of the most significant changes of the
disclosure regime.
By notice issued January 15, 1994 (and published in the Official
Gazette at 1159 TMOG 14), the Office announced the Board would not
follow many of the 1993 changes to the federal rules, including the
disclosure regime established by the amended rules. This notice
specifically stated, "the Office's Public Advisory Committee for
Trademark Affairs has recommended that incorporation of the [1993]
amendments [related to conferencing and disclosure] in Board practice
be deferred until the Office can evaluate the effects of the amendments
on civil actions."
The Office subsequently amended the Trademark Rules of Practice in
1998. The original notice of amendment issued September 29, 1998 (and
was published at 1214 TMOG 145); and a correction notice issued October
20, 1998 (and was published at 1215 TMOG 64). While the Office did not
adopt a disclosure regime for Board inter partes cases as an element of
these amendments, the Office noted that the Board would continue to
monitor recurring procedural issues in Board cases and that in the
future the Office might propose and adopt additional changes to
practice.
In accordance with the recommendation of the Public Advisory Committee
for Trademark Affairs, and to evaluate the effects of the 1993 and 2000
amendments on civil actions, the Office reviewed an empirical study and
numerous other available articles and reports on the subject of the
disclosure regime followed in the courts. The empirical study reported
that the new disclosure regime has been successful in the courts:
In general, initial disclosure appears to be having its intended
effects. Among those attorneys who believed there was an impact, the
effects were most often of the type intended by the drafters of the
1993 amendments. Far more attorneys reported that initial disclosure
decreased litigation expense, time from filing to disposition, the
amount of discovery, and the number of discovery disputes than said it
increased them. At the same time, many more attorneys said initial
disclosure increased overall procedural fairness, the fairness of the
case outcome, and the prospects of settlement than said it decreased
them.
Thomas E. Willging, Donna Stienstra, John Shapard & Dean Miletich,
An Empirical Study of Discovery and Disclosure Practice Under the
1993 Federal Rule Amendments, 39 B.C.L. Rev. 525, 534-35 (May 1998).
The Office concluded from its review of the empirical study and other
materials that use of a modified disclosure regime in Board
proceedings, will increase the possibility of parties settling a Board
proceeding and doing so sooner. In addition, even if parties do not
settle the case, disclosure will promote more efficient discovery and
trial, reduce incidents of unfair surprise, and increase the likelihood
of fair disposition of the parties' claims and defenses. In large part,
disclosure will serve as a substitute for a certain amount of
traditional discovery and will provide a more efficient means for
exchange of information that otherwise would require the parties to
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serve traditional discovery requests and responses thereto.
Following many consultations with the Trademark Public Advisory
Committee (successor to the Public Advisory Committee for Trademark
Affairs) or subcommittees thereof, the Office proposed adoption of a
disclosure regime for Board inter partes proceedings, in a Notice of
Proposed Rule Making (NPRM) at 71 Fed.Reg. 2498 (January 17, 2006). The
NPRM and comments received in response thereto are available for
viewing at the http://www.regulations.gov web portal.
One subject related to the adoption of a disclosure regime and covered
in the NPRM is the applicability of the Board's standard order for
protecting confidential or otherwise sensitive information and
documents. By notice published in the Office's Official Gazette (O.G.)
on June 20, 2000 (1235 TMOG 70), the Office noted the Board's adoption
of that standard order. The O.G. notice explained that the standard
order was promulgated in response to many public requests for such an
order and explained that the standard order could be adopted by parties
as published or with modifications. The O.G. notice also noted that the
Board could impose the order in appropriate cases. In fact, since
publication of the O.G. notice, it has become quite routine for the
Board to impose the order in any inter partes proceeding in which the
efficient conduct of discovery is hampered by the parties' inability to
agree on a protective order.
In the disclosure regime established by this final rule, the Board's
standard protective order is applicable in all cases. The Board's
notice of the institution of a proceeding will advise parties that the
standard protective order applies and that it is available on the
Office's web site or, by request made to the Board, in hard copy form.
The applicability of this standard protective order does not make all
submissions confidential. Parties must utilize its provisions to
protect confidential information. Neither does the applicability of the
standard order preclude a party, when appropriate, from moving for a
protective order under applicable trademark or federal rules, when the
standard order does not cover the extant circumstances or is viewed by
the moving party as providing insufficient protection. As under current
practice, parties are free to agree to modify the standard protective
order. It should be routine for parties to discuss possible
modification in the disclosure/discovery/settlement conference
(discovery conference) that is a part of the disclosure regime
established by this final rule. Absent a stipulation to vary the terms
of the standard protective order, approved by the Board, or an order by
the Board granting a party's motion to use an alternative order, the
parties must abide by the standard order.
A. The Schedule for Cases Under the Disclosure Model
The Board's notice of the commencement of the proceeding (commonly
referred to as the institution order) will set forth disclosure,
discovery and trial-related deadlines, as illustrated below.
The institution order will set forth specific dates for the various
phases in a case. Since each deadline or phase is measured from the
date of the institution order, the parentheticals explain the total
number of days, as measured from that date, until each deadline:
Due date for an answer - 40 days from the date of the institution order.
(Institution date plus 40 days.)
Deadline for a disclosure/discovery/settlement conference - 30 days from
the date the answer is due.
(Institution date plus 70 days.)
Discovery opens - 30 days after the date the answer is due.
(Institution date plus 70 days.)
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Deadline for making initial disclosures - 30 days from the opening of
the discovery period
(Institution date plus 100 days.)
Deadline for disclosure of expert testimony - 30 days prior to close of
discovery.
(Institution date plus 220 days.)
Discovery closes - 180 days from the opening date of the discovery
period.
(Institution date plus 250 days.)
Deadline for plaintiff's pretrial disclosures - 15 days prior to the
opening of plaintiff's testimony period.
(Institution date plus 295 days.)
Plaintiff's 30-day testimony period - closes 90 days after the close of
discovery.
(Institution date plus 340 days.)
Deadline for defendant's pretrial disclosures - 15 days prior to the
opening of defendant's testimony period.
(Institution date plus 355 days.)
Defendant's 30-day testimony period - closes 60 days after the close of
plaintiff's testimony period.
(Institution date plus 400 days.)
Deadline for plaintiff's rebuttal pretrial disclosures - 15 days prior
to the opening of plaintiff's rebuttal testimony period.
(Institution date plus 415 days.)
Plaintiff's 15-day rebuttal testimony period - closes 45 days from close
of defendant's testimony period.
(Institution date plus 445 days.)
Under this schedule, discovery typically will open after the discovery
conference, unless the parties defer their discovery conference to the
deadline date, in which case discovery will open concurrently with the
conference.
The deadline for making initial disclosures is similar to that of
Federal Rule 26(a)(1), except that disclosure under the federal rule is
measured from the actual date of, not the deadline for, the discovery
conference. Because the Board approach measures the due date for
disclosures from the opening of discovery, which typically will occur
after the discovery conference, the Board approach typically will
provide a longer period for making disclosures than is provided under
the federal rule. This will accommodate the possibility of motions to
suspend for settlement talks, which are quite common in Board
proceedings. The Board anticipates that such motions may frequently
result from settlement discussions begun during the required
disclosure/discovery/settlement conference.
The length of the discovery period is the same as under current Board
practice, i.e., 180 days. Disclosures will be made no later than thirty
(30) days into that period, and the parties will have another 150 days
for any necessary additional discovery. The trial schedule, with its
sixty-day break between discovery and trial and thirty-day breaks
between the respective testimony periods, is also the same as under
current Board practice.
Because disclosure is tied to claims and defenses, in general, a
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defendant's default or the filing of various pleading motions under
Federal Rule 12 will effectively stay the parties' obligations to
conference and, subsequently, make initial disclosures. An answer must
be filed and issues related to the pleadings resolved before the
parties can know the extent of claims and defenses and, therefore, be
able to discuss the extent of their initial disclosure obligations,
plans for discovery, and the possibility of settlement.
The Board anticipates it will be liberal in granting extensions or
suspensions of time to answer, when requested to accommodate settlement
talks or submission of the dispute to an arbitrator or mediator.
However, if a motion to extend or suspend for settlement talks,
arbitration or mediation is not filed prior to answer, then the parties
will have to proceed, after the answer is filed, to their discovery
conference, one point of which is to discuss settlement. It is unlikely
the Board will find good cause for a motion to extend or suspend for
settlement if the motion is filed after answer but prior to the
discovery conference, precisely because the discovery conference itself
provides an opportunity to discuss settlement.
The parties' discovery conference may be in person or by other means.
A Board professional, i.e., an Interlocutory Attorney or an
Administrative Trademark Judge, will participate in the conference upon
the request of any party. If the parties propose to meet in person,
participation by a Board professional will be by telephone, and be
arranged by the parties. A request for the participation of a Board
professional may only be made with or after the answer is filed but in
no event later than ten (10) days prior to the deadline for conducting
the discovery conference. The request may be made by phone or via
ESTTA. If neither party requests participation of a Board professional
in the discovery conference, the parties must meet on their own, in
person or by other means, no later than the prescribed deadline, and
the Board will operate on the assumption that the conference was held
by the deadline. The parties do not have to file a disclosure/discovery
plan with the Board, following their discovery conference, unless they
are seeking leave by motion or stipulation to alter standard
deadlines/obligations, or unless they were directed to make a
particular filing by a participating Board professional.
There is no Federal Rule 16(b) scheduling conference/order. The Board's
institution order will already have set a schedule for the case.
Disclosure deadlines and obligations may be modified upon stipulation
of the parties approved by the Board, or upon motion granted by the
Board, or by order of the Board. If a stipulation or motion is denied,
dates may remain as set. Because dates may remain as set if the Board
denies a stipulation or motion to alter dates, it is in the interests
of the parties to file stipulations or motions promptly after the
conference.
B. The Interplay of Disclosure and Discovery
A party may not seek discovery through traditional devices until after
it has made its initial disclosures. A party may not move for summary
judgment until after it has made its initial disclosures, except on
grounds of claim or issue preclusion or lack of jurisdiction by the
Board.
Initial disclosure obligations should be easier to meet in Board cases
than in civil actions. One reason is that the Board's jurisdiction is
limited to determining the right of a party to obtain, or retain, a
registration. Moreover, the extent of available claims and defenses
that may be advanced is not nearly as broad as in the district courts.
In addition, the Board recognizes the impact of other issues relatively
unique to Board proceedings. For example, a high percentage of
applications involved in oppositions are not based on use of the
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applied-for mark in commerce but, rather, on intent to use, on a
foreign registration or on an international registration. Further,
certain precepts that govern analysis of issues raised by claims or
defenses in typical Board cases effectively limit the Board's focus.
For example, in a case under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), the Board focuses only on goods or services recited
in identifications, and on the mark as registered or applied-for,
irrespective of many actual marketplace issues.
Federal Rule 26(a)(1) requires initial disclosures to obviate the need
to use traditional discovery to obtain "basic information" about a
party's claims or defenses. ("A major purpose of the [1993]
revision is to accelerate the exchange of basic information about the
case and to eliminate the paper work involved in requesting such
information, and the rule should be applied in a manner to achieve
those objectives." Fed. R. Civ. P. 26(a)(1) advisory committee's
note, 1993 amendments.) However, in Board cases, subsections (C) and
(D) of Federal Rule 26(a)(1) are not relevant and will not apply.
Further, in complying with subsections (A) and (B), the range of
individuals with discoverable information that the disclosing party may
use to support a claim or defense, and the number of documents, data
compilations, and tangible things that a party may use to support a
claim or defense, will be more limited than in district court cases,
because of the more limited claims and defenses available in Board
cases.
Under Federal Rule 26(a)(1), a party is not obligated to disclose the
name of every witness, document or thing that may have or contain
discoverable information about its claim or defense, but merely the
witnesses, documents and things having or containing discoverable
"information that the disclosing party may use to support its claims
or defenses." Further, initial disclosures focus on exchange of
"basic information" about witnesses and documents and do not
substitute for taking comprehensive discovery, when necessary. (For
reasons already noted in relation to initial disclosures, discovery
also should be more limited in scope in Board proceedings than in
district court cases.)
The specificity of information parties will provide to comply with
initial disclosure obligations is one of the issues that must be
anticipated and discussed by the parties during their discovery
conference. Further, although this final rule requires fewer, and less
extensive, initial disclosures than those proposed by the NPRM, the
parties are free to discuss the option of making more extensive
disclosure than is required by the rule. For example, parties could
choose to rely on specified, reciprocal disclosures in lieu of formal
discovery, if they find such an approach more efficient and less
costly. Similarly, parties could choose to forgo disclosures and agree
to utilize only traditional discovery devices. (Either approach, as a
deviation from the regime prescribed by this final rule, would be
subject to Board approval.)
To emphasize, initial disclosures are not intended to substitute for
all discovery but, rather, to prompt routine disclosure of names of
potential witnesses and basic information about documents and things
that a party may use to support a claim or defense. Any adverse party
is free to take discovery on subjects that will undermine a claim or
defense.
Written initial disclosures of facts known by witnesses, if provided by
a party, for example, pursuant to an approved agreement to utilize more
extensive disclosure than required by this final rule, may be used in
support of or in opposition to a motion for summary judgment and may,
at trial, be introduced by notice of reliance. Disclosed documents, if
provided in lieu of descriptions of documents, may also be used to
support or contest a motion for summary judgment but at trial they may
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be introduced by notice of reliance only if otherwise appropriate for
such filing. In essence, initial written disclosures and initial
disclosures of documents will be treated like responses to written
discovery requests.
C. Expert Disclosure and Pretrial Disclosure
A party's planned use of expert witnesses is largely governed by
Federal Rule 26(a)(2). This rule governs testifying witnesses, not
consulting experts who are not expected to testify.
A plaintiff's plan to use any expert at trial must be disclosed no
later than thirty (30) days prior to the close of discovery (i.e.,
ninety (90) days prior to the opening of plaintiff's testimony period).
In any case in which a defendant plans to use an expert at trial
irrespective of whether the plaintiff plans to do so, the defendant
must also make its disclosure no later than thirty (30) days prior to
the close of discovery. A party planning to use an expert solely to
contradict or rebut an adverse party's expert must disclose such plans
within thirty (30) days of the adverse party's prior disclosure (i.e.,
no later than close of discovery). Federal Rule 26(a)(2) also details
what information and materials must be provided for a party to satisfy
its disclosure obligation with respect to experts.
Federal Rule 26(a)(2) allows the Board by order, or the parties by
stipulation approved by the Board, to alter the sequence and timing of
expert disclosures and the extent of the information or material that
must be disclosed to satisfy the disclosure obligation. The parties are
expected to engage in at least preliminary discussions on these
subjects in their discovery conference. If any party retains an expert
earlier in the Board proceeding than the applicable disclosure
deadline, and any adverse party has inquired about experts through
traditional discovery requests, the party retaining the expert may not
rely on the disclosure deadline to delay revealing the expert to such
adverse party.
Any party disclosing plans to use an expert must notify the Board that
it has made the required disclosure. The Board may then suspend
proceedings to allow for discovery limited to experts. The suspension
order may anticipate and also provide for discovery regarding any
expert that may subsequently be retained for rebuttal purposes.
The Office recognizes that there may be cases in which a party may not
decide that it needs to present an expert witness at trial until after
the deadline for expert disclosure. In such cases, disclosure must be
made promptly when the expert is retained and a motion for leave to
present testimony by the expert must be filed. Prompt disclosure after
the deadline, however, does not necessarily ensure that the expert's
testimony or evidence will be allowed into the record at trial. The
Board will decide on a case-by-case basis how to handle a party's late
identification of experts.
Pretrial disclosures are governed by Federal Rule 26(a)(3), but the
Board does not require pretrial disclosure of each document or other
exhibit that a party plans to introduce at trial under Rule
26(a)(3)(C). Further, because the trial schedule in a Board proceeding
employs alternating testimony periods with gaps between them, the due
dates for pretrial disclosure of witnesses expected to testify, or who
may testify if the need arises, will be different for each party and
will be specified in the Board's institution order. In essence, each
party will make its pretrial disclosures under Federal Rules
26(a)(3)(A) and 26(a)(3)(B) fifteen (15) days prior to its testimony
period. Witnesses who are expected to or may testify by affidavit, in
accordance with a written stipulation of the parties under Trademark
Rule 2.123(b), 37 C.F.R. § 2.123(b), must be disclosed under Federal
Rule 26(a)(3)(A) along with disclosure of witnesses who are expected to
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or may testify by giving oral testimony.
A party may object to improper or inadequate pretrial disclosures and
may move to strike the testimony of a witness for lack of proper
pretrial disclosure.
Pretrial disclosure of plans to file notices of reliance is not
required. The notice of reliance is a device for introduction of
evidence that is unique to Board proceedings. There are established
practices covering what can be introduced by notice of reliance, how it
must be introduced, and for objecting to, or moving to strike, notices
or material attached thereto. There is less opportunity for surprise or
trial by ambush with notices of reliance because they are most often
used to introduce discovery responses obtained from an adversary,
printed publications in general circulation, or government documents
generally available to all parties. A party planning to introduce an
adverse party's discovery deposition, or part thereof, need not
disclose such plans in order to comply with Federal Rule 26(a)(3)(B),
which covers introduction of depositions in lieu of testimony under
Federal Rule 32(a).
III. Removal of Option to Make Submissions on CD-ROM
The Office has removed from Trademark Rule 2.126, 37 C.F.R. § 2.126,
the option to file submissions in CD-ROM form. CD-ROMs have rarely been
utilized by parties and have presented technical problems for the
ESTTA/TTABIS systems.
IV. Clarification of Rule on Briefing of Motions
The Office has amended Trademark Rule 2.127, 37 C.F.R. § 2.127, to
clarify that a table of contents, index of cases, description of
record, statement of the issues, recitation of facts, argument and
summary all count against the limit of twenty-five (25) pages for a
brief in support of a motion or in response to a motion and the limit
of ten (10) pages for a reply brief.
Discussion of Specific Rules:
Title 37 of the Code of Federal Regulations, Part 2, is amended
as follows:
[2.99(b) to (d)]
Sections 2.99(b) to (d) currently set forth certain procedures for
processing an application for registration as a lawful concurrent user,
and for institution of a concurrent use proceeding at the Board.
Sections 2.99(b), (c) and (d)(1) are amended to shift applicant's time
to furnish copies of applicant's application, specimens and drawing
until after the Board's notification of the proceeding; and to
indicate that the Office may transmit the notification of proceedings
via e-mail to any party that has provided an e-mail address.
[2.101(a), (b) and (d)]
Section 2.101(a) currently sets forth that an
opposition proceeding is commenced by filing a timely opposition,
together with the required fee, in the Office. Section 2.101(a) is
amended to specify that proof of service on applicant or its attorney
or domestic representative of record in the USPTO, at the
correspondence address of record in the USPTO, must be included with
the notice of opposition.
Section 2.101(b) currently sets forth who may file a notice of
opposition and how the notice must be signed. Section 2.101(b) is
amended to reflect the new requirement in § 2.101(a) that an opposer
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include proof of service on the applicant with its notice of
opposition. It also explains who must be served, specifies that the
correspondence address of record in the USPTO is to be used, and
specifies the steps opposer must take if the service copy of the notice
of opposition is returned to opposer as undeliverable.
Section 2.101(d)(4) currently sets forth that the filing date of an
opposition is the date of its receipt in the Office with the required
fee. Section 2.101(d)(4) is amended to add proof of service on
applicant or its attorney or domestic representative of record in the
USPTO, at the correspondence address of record in the USPTO, to the
requirements for receiving a filing date for the notice of opposition;
and to include a clarifying reference to filing by "Express Mail"
under § 2.198.
[2.105(a) and (c)]
Section 2.105(a) currently sets forth that the
Board will prepare a notification of the filing of a notice of
opposition. Section 2.105(a) is amended to cross-reference §§ 2.101
and 2.104 regarding proper form for and proper service of a notice of
opposition, and to indicate that the Board may transmit the
notification of proceedings via e-mail to any party that has provided
an e-mail address.
Section 2.105(c) currently sets forth that the Board will forward
copies of the notice of opposition, exhibits and notification of the
proceeding to an applicant. Section 2.105(c), in its introductory text,
is amended to delete the reference to forwarding of copies of the
notice of opposition and exhibits by the Board, and to reflect the
amendments to § 2.101 that now require the opposer to serve the notice
of opposition and exhibits directly on the applicant, attorney or
domestic representative.
[2.111(a) to (c)]
Section 2.111(a) currently sets forth that a
cancellation proceeding is commenced by the filing of a timely petition
for cancellation, together with the required fee, in the Office.
Section 2.111(a) is amended to specify that proof of service on the
owner of the registration, or the owner's domestic representative of
record in the USPTO, at the correspondence address of record in the
USPTO, must be included with the petition for cancellation and fee.
Section 2.111(b) currently sets forth who may file a petition for
cancellation, how the petition must be signed and certain provisions
regarding when a petition may be filed. Section 2.111(b) is amended to
reflect the new requirement in § 2.111(a) that the petitioner must
include with its petition for cancellation proof of service on the
owner of the registration, or domestic representative of the owner of
record in the USPTO, to specify that the correspondence address of
record in the USPTO is to be used, and to specify the steps petitioner
must take if the service copy of the petition for cancellation is
returned to petitioner as undeliverable.
Section 2.111(c)(4) currently sets forth that the filing date of a
petition for cancellation is the date of its receipt in the Office with
the required fee. Section 2.111(c)(4) is amended to add proof of
service on the owner of the registration, or domestic representative of
record in the USPTO, at the correspondence address of record in the
USPTO, to the requirements for receiving a filing date for the petition
for cancellation; and to include a clarifying reference to filing by
"Express Mail" under § 2.198.
[2.113(a) and (c)]
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Section 2.113(a) currently sets forth that the
Board will prepare a notification of the filing of a petition for
cancellation. Section 2.113(a) is amended to cross-reference §§ 2.111
and 2.112 regarding proper form for and proper service of a petition
for cancellation, and to indicate that the Board may transmit the
notification of proceedings via e-mail to any party that has provided
an e-mail address.
Section 2.113(c) currently sets forth that the Board will forward
copies of the petition for cancellation, exhibits and notification of
the proceeding to the respondent (owner of the registration). Section
2.113(c) is amended to delete the reference to forwarding of copies of
the petition for cancellation and exhibits by the Board, and to reflect
the amendments to § 2.111 that now require the petitioner to serve the
petition for cancellation and exhibits directly on the owner of the
registration, attorney or domestic representative.
[2.113(e)] [remove and reserve]
Section 2.113(e) currently sets forth that the Board may allow a
petitioner time to correct an informality in a defective petition for
cancellation. Section 2.113 is amended to remove and reserve paragraph (e)
to conform the rule to the existing practice whereby the Board no longer
advises petitioners of defects in petitions for cancellation.
[2.116(g)] [add]
Section 2.116 currently sets forth an
explanation of the applicability of the Federal Rules of Civil
Procedure in Board inter partes trademark proceedings, and equates
particular terms used in the Federal Rules to terms used in inter
partes trademark proceedings. Section 2.116 is amended to add new
paragraph (g). Section 2.116(g) provides that the Board's standard
protective order, available via the Office's web site or upon request
made to the Board, is applicable to all inter partes trademark
proceedings, unless the parties agree to, and the Board approves, an
alternative protective order, or unless a motion by a party to enter a
specific protective order is granted by the Board.
[2.118]
Section 2.118 currently sets forth that the Office may
provide notice of a proceeding by publication in the Official Gazette,
when a notice of a proceeding mailed to a registrant is returned to the
Office as undeliverable. Section 2.118 is amended to also allow for
notice by publication when a notice mailed to an applicant is returned
as undeliverable.
[2.119(a) and (b)]
Section 2.119(a) currently sets forth provisions
regarding proof of service requirements for papers filed in Board inter
partes trademark proceedings, but specifies that proof of service is
not required for certain papers that the Office serves. Section
2.119(a) is amended by striking out the list of exceptions to reflect
amendments to other sections that now require opposers, petitioners and
concurrent use applicants to serve papers previously served by the
Office. Section 2.119(a) also is amended to change "Patent and
Trademark Office" to "United States Patent and Trademark Office,"
and to make the singular "notice of appeal" the plural "notices
of appeal."
Section 2.119(b) currently sets forth the permissible means for a party
to serve a paper on an adverse party. Section 2.119(b) is amended to
add paragraph (6), which will allow parties by agreement to meet their
service obligations by utilizing fax or e-mail.
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[2.120(a), (d) through (j)]
Section 2.120(a) currently sets forth
various general provisions regarding discovery in Board inter partes
trademark proceedings, including the extent to which the Federal Rules
of Civil Procedure are applicable, and the timing and sequence of the
discovery period and various discovery activities. Section 2.120(a) is
amended to separate it into three paragraphs. Paragraph (1) discusses
the applicability of the federal rules provisions relating to a
conference of the parties to discuss disclosures, discovery and
possible settlement, and the requirements for automatic disclosures.
Paragraph (1) also explains that the Board will, by order, specify the
dates for conferencing, disclosures and discovery. Paragraph (2)
provides more specific information regarding the deadlines or due dates
for conferencing, disclosures, and discovery; and explains that the
parties by stipulation approved by the Board, or a party by motion
granted by the Board, may seek to reset various deadlines or due dates
or to alter their disclosure obligations. Paragraph (3) provides that a
party must make its initial disclosures prior to seeking discovery,
provides a deadline for taking discovery depositions and for serving
various types of discovery requests, and for serving responses to
discovery requests, and provides that the parties by stipulation
approved by the Board, or a party by motion granted by the Board, may
seek to alter the obligation to make initial disclosures prior to
seeking discovery or to reset the deadlines relating to discovery.
Section 2.120(d)(1) currently sets forth the limit on the number of
interrogatories a party may serve, means by which the parties or a
party may seek leave to exceed the limit, and procedures for either
objecting to interrogatories alleged to be in excess of the limit or
seeking to compel responses. Section 2.120(d)(1) is amended to clarify
that a motion or stipulation of the parties to allow interrogatories in
excess of the limit requires approval of the Board.
Section 2.120(e) currently sets forth various provisions regarding
filing and required support for motions to compel. Section 2.120(e) is
amended to make provisions regarding a motion to compel applicable to
discovery and initial and expert disclosures.
Section 2.120(f) currently sets forth various provisions by which a
party from whom discovery is sought may seek a protective order from
the Board. Section 2.120(f) is amended to make provisions regarding a
motion for a protective order applicable to discovery requests and
required initial disclosures.
Section 2.120(g) currently sets forth provisions regarding how and when
a party may move for entry of sanctions for failure of an adverse party
to provide discovery or comply with an order of the Board relating to
discovery. Section 2.120(g), in paragraph (1) is amended to make its
provisions applicable to Board orders relating to disclosures and to
provide a deadline for filing a motion for sanctions for a party's
failure to participate in a discovery conference.
Section 2.120(h)(2) currently sets forth provisions regarding motions
to test the sufficiency of responses to requests for admissions.
Section 2.120(h)(2) is amended to state that filing a motion to test
the sufficiency of responses to requests for admissions shall not toll
the time for a party to comply with disclosure obligations, to respond
to outstanding discovery requests, or to appear for a noticed deposition.
Section 2.120(i) currently sets forth provisions regarding the
availability and use of telephone conferences and the possibility that
parties may have to meet at the Board for a pretrial conference.
Section 2.120(i) is amended to clarify language used in paragraph
(i)(1), to conform titles used in paragraph (i)(2) to existing titles,
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and to specify that the existing provision through which the Board may
require parties to attend a conference at the Board's offices can
involve discovery or disclosure issues.
Section 2.120(j) currently sets forth provisions governing the use of
discovery depositions and discovery responses by the deposing or
inquiring party. Section 2.120(j), in paragraphs (3) and (5) through
(8), is amended to provide that written disclosures and disclosed
documents shall be treated in essentially the same manner as
information and documents obtained through discovery requests; and to
remove a reference to past Board practice whereby filings related to
discovery that should not have been filed with the Board were returned
to the parties.
[2.121(a) and (d)]
Section 2.121(a) currently sets forth the process
by which the Board issues a trial order setting various deadlines, and
provisions for resetting deadlines by stipulation or motion. Section
2.121(a) is amended to state that deadlines for pretrial disclosures
will be included in the Board's trial order, that provisions for
resetting dates apply to pretrial disclosures and testimony period
dates, and to delete (and reserve) paragraph 2.
Section 2.121(d) currently sets forth how parties should file
stipulations resetting testimony periods. Section 2.121(d) is amended
to account for stipulations resetting pretrial disclosure deadlines and
testimony periods.
[2.121(e)] [add]
Section 2.121(e) is added to explain what is required of a party when
it makes its pretrial disclosures.
[2.122(d)]
Section 2.122(d), in paragraph (1), currently sets forth
provisions whereby a party in position of opposer or petitioner may
make its registration(s) of record with its pleading. Section 2.122(d),
in paragraph (1), is amended to conform to existing practice by
removing the requirement for a party in position of opposer or
petitioner to file two copies when making a pleaded registration of
record with its pleading, and to allow the party to rely on printouts
from Office electronic database records establishing status and title
of a registration.
[2.123(e)]
Section 2.123(e) currently sets forth provisions regarding
the examination of witnesses. Section 2.123(e), in paragraph (3), is
amended to provide that a party may object to improper or inadequate
pretrial disclosures and may move to strike the testimony of a witness
for lack of proper pretrial disclosure.
[2.126(a)]
Section 2.126(a) currently sets forth provisions regarding
the filing of submissions on paper, and their related exhibits. Section
2.126(a), in paragraph (6), is amended to reflect the removal of § 2.126(b).
[2.126(b)] [remove and reserve]
Section 2.126(b) currently allows a party to make submissions on CD-ROM.
This section is deleted and reserved.
[2.127(a), (c) and (e)]
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Section 2.127(a) currently sets forth provisions regarding the briefing
of motions. Section 2.127(a) is amended to clarify certain provisions
relating to briefing of motions and to conform them to existing practice.
Section 2.127(c) is amended to conform titles used in the section to
current titles and to correct a typographical error.
Section 2.127(e) currently sets forth provisions regarding filing and
briefing motions for summary judgment. Section 2.127(e) is amended to
provide that a party generally may not file a motion for summary
judgment before it has made its initial disclosures; and to provide
that a party may submit written disclosures and disclosed documents
when briefing a motion for summary judgment.
[2.129(a)]
Section 2.129(a) is amended to conform titles used in the
section to current titles.
[2.133(a) and (b)]
Sections 2.133(a) and (b) currently set forth
provisions regarding the amendment of an application or registration
involved in an inter partes trademark proceeding. Sections 2.133(a) and
(b) are amended to conform the sections to current Office practice.
[2.142(e)]
Section 2.142(e) is amended to conform titles used in the
section to current titles.
[2.173(a)]
Section 2.173(a) currently sets forth provisions regarding
amendment of a registration involved in an inter partes trademark
proceeding. Section 2.173(a) is amended to conform the provisions in
the section to current Office practice.
[2.176]
Section 2.176 currently sets forth provisions regarding
amendment of a registration involved in an inter partes trademark
proceeding. Section 2.176 is amended to conform the provisions in the
section to current Office practice.
Response to comments: The Office published a Notice of
Proposed Rule Making (NPRM or proposed rule) in the Federal Register at
71 Fed. Reg. 2498 (Jan. 17, 2006), in the Official Gazette at 1303 TMOG
58 (February 14, 2006), and posted the notice on the Office's web site
(http://www.uspto.gov) and at http://www.regulations.gov. The comment
period was originally set to close on March 20, 2006. Six comments
requested only an extension of the comment period and/or a public
hearing. Numerous others included specific comments but also requested
an extended comment period and/or a public hearing. As a result of the
many requests for an extension and/or hearing, the USPTO published a
notice reopening the comment period until May 4, 2006, i.e., forty-five
(45) days beyond the original deadline, in the Federal Register at 71
Fed. Reg. 15097 (March 27, 2006), and posted that notice on the
Office's web site and at http://www.regulations.gov. All told, the
Office received comments from the American Bar Association Section of
Intellectual Property Law (ABA-IPL), American Intellectual Property Law
Association (AIPLA), the Intellectual Property Owners Association
(IPO), the International Trademark Association (INTA), the New York
State Bar Association Intellectual Property Law Section (NYSBA-IPL),
three businesses, eleven attorneys in their individual capacities, and
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eight law firms. In addition, ABA-IPL, AIPLA, IPO and INTA, while
maintaining their separate comments, also submitted consensus views on
some subjects of the proposed rules. A number of rule amendments
suggested in the comments, though meritorious, cannot be adopted at
this time because they are outside the scope of the present rule
making. Virtually every proposal received at least some support. Many
proposals, however, prompted either criticism or requests for
clarification. Finally, many who provided comments also offered
alternatives to promote the stated goals of the proposed rules. The
comments and the Office's responses to the comments follow:
Comments subject 1 (Service by Plaintiffs): Many comments
addressed the Office's proposal to have plaintiffs serve on defendants
copies of complaints or, in the case of a concurrent use applicant, its
claim of right to a registration. Many comments stated no objection in
principle to a service requirement, but sought clarification of the
type of service that would be sufficient and argued that personal
service should not be required. Most comments addressing service also
sought clarification of whether a plaintiff would have any duty to
investigate ownership of a mark, application, or registration, and
argued that there should be no such duty beyond reference to Office
records. Many also sought clarification of what was meant by the phrase
"correspondence address of record."
Response: The Office is, in this final rule, proceeding
with a requirement that plaintiffs in inter partes proceedings serve on
defendants copies of complaints or claims of right to a concurrent use
registration on defendants. In the affected rules and in the
Supplementary Information portion of this notice, the Office has
clarified the meaning of correspondence address of record. It further
clarifies that a plaintiff has no duty to investigate other than to
refer to Office records, that personal service is not required, and
that all that is required is service and proof of service pursuant to
§ 2.119.
Comments subject 2 (Service of Additional Copies by
Plaintiffs): Many comments argued against the requirement in the
proposed rules that a plaintiff serve additional copies of its
complaint or claim of right to a concurrent use registration on parties
the plaintiff might have reason to believe had an ownership interest in
a mark, application, or registration, even if not shown by Office
records to have such an interest. One comment suggested that a
petitioner should serve a copy of its petition for cancellation on the
attorney, if any, that prosecuted the application resulting in issuance
of a registration; but most comments argued against such a practice as
a burden on the attorney, who may no longer represent the client.
Response: The Office recognizes that a plaintiff may
conduct independent investigations prior to commencing a proceeding and
may thereby discover an ownership interest in a party not reflected in
Office records, or a more current address for a prospective defendant.
The Office did not propose to require any investigation prior to
commencement of a proceeding, but only recognized that such
investigations do occur. The Office intended by this proposal only to
enhance the prospects of having any real party in interest joined as a
defendant and any subsequent judgment be binding on the real party in
interest. The Office has withdrawn this proposal and retained only a
requirement that the plaintiff serve the defendant or defendants
revealed by reference to Office records, at the correspondence
address(es) of record.
Comments subject 3 (Informing the Board of Returned Service
Copies): Several comments sought clarification of the proposed
requirement that a plaintiff inform the Board of any return to the
plaintiff of an undeliverable service copy of its complaint or claim of
right to a concurrent use registration. In particular, these comments
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sought clarification of the plaintiff's obligations when the service
copy is returned. One comment, focusing on the proposed requirement
that the Board be notified "within 10 days" of a returned service
copy, sought clarification as to the event that would start the count
and also sought five additional days.
Response: The Office is proceeding with the requirement and
is providing the requested clarifications in the Supplementary
Information section of this notice. There is no obligation on a
plaintiff to investigate the failure of service; but if the returned
service copy includes a new address for the defendant or if the
plaintiff voluntarily investigates and uncovers a new address, then
this information must be included in the report of the failure of
service. There is no obligation on the plaintiff to serve a defendant
at any new address. There are no specific obligations regarding how the
plaintiff informs the Board that a service copy has been returned. The
plaintiff can inform the Board in any manner that it might otherwise
use to communicate with the Board, as specified in §§ 2.126 and
2.191. The ten (10) days within which a party receiving a returned
service copy should notify the Board of the return is measured from the
date of delivery to the serving party of the returned service copy. The
Office has decided not to extend that time period to fifteen (15) days.
The Board will effect service on the defendant whose service copy was
returned, utilizing the newer correspondence address information the
plaintiff has obtained, if any, or information the Board may obtain
through its own investigation. In the Board order effecting service,
the Board will clarify what address is to be used for service
thereafter, and amend, if necessary, any deadlines or dates that were
set in the institution order. If a current correspondence address for
the defendant cannot be obtained, then the Board may effect service by
publication in the Official Gazette. Service by publication will
include a web address that will allow the defendant to view the
complaint or concurrent use application through the Office's web site.
Comments subject 4 (Correspondence by e-mail): One comment
discussed the prospective expanded use of e-mail by the Board when
issuing notices that proceedings have been instituted. Specifically,
the comment proposed that the rules explaining that the Board may use
e-mail to notify parties of the commencement of a proceeding be amended
to allow for forwarding of notices to multiple e-mail addresses for a
party. Another comment focused on use of e-mail by parties when
forwarding service copies, and sought confirmation that service by
e-mail does not result in an additional five (5) days to respond to the
served paper, as is the case with other means of service, pursuant to
§ 2.119(c).
Response: The proposed rules specifying that the Board may
use e-mail to notify a party of a proceeding can be read to allow the
Board to utilize more than one e-mail address without need of further
amendment. Whether the Board will use more than one e-mail address,
however, is a discretionary matter to be decided on a case-by-case
basis. As for agreed use by parties of e-mail or fax for forwarding of
service copies, the Office confirms that § 2.119(c) would not apply to
service by electronic transmission (e-mail or fax) under § 2.119(b)(6).
Comments subject 5 (Universal applicability of the Board's
Standard Protective Order): Numerous comments addressed the
proposal to make the Board's Standard Protective Order applicable in
all inter partes proceedings. Many of these comments argued that the
standard order does not provide necessary protections in all possible
circumstances. Some comments noted that the standard order might not
provide necessary protection when dealing with a pro se party, or after
the conclusion of the proceeding. One comment noted that the Board has
no ability to issue injunctions or contempt rulings and argued that
possible entry of a sanction in a Board proceeding or a disciplinary
action against an attorney would not provide immediate protection or
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remedy economic harm. Some of the comments concerned with
post-proceeding issues argued that the Board should make the standard
protective order applicable during and after the proceeding, or should
require the parties to sign the protective order, so as to create a
contract that may provide a cause of action after the conclusion of the
proceeding if protected information was revealed by a party after
conclusion of a proceeding.
Numerous comments argued that the Board should allow parties time to
negotiate a protective order of their own before imposing the standard
order. Some comments indicated that if the Board was to require fewer
initial disclosures and more closely follow what is required under
Federal Rule 26(a)(1), then the asserted deficiencies in the standard
protective order would be less problematic for parties. One comment
among this latter group suggested that the standard order would not
need to be universally applied if initial disclosures were lessened,
apparently on the theory that limited disclosures would not likely
involve any information in need of protection.
Response: The standard protective order was created "in
response to requests from parties involved in [Board] cases" and
was first published in the Official Gazette on June 20, 2000, at 1235
TMOG 70. The announcement explained that parties could agree to use the
standard order or could use it as a template or starting point for
crafting an order more to their liking. The announcement also explained
that the Board may make orders designed to facilitate discovery and
trial and that the Board therefore could impose the standard order in
any case in which it would be appropriate to do so. The standard order
is also discussed in the Board's manual of procedure, the TBMP, and the
order itself is contained in the appendix of forms included in the
manual.
The Board's interlocutory attorneys have routinely applied the standard
order when parties are unable to agree on terms for a protective order
and progress in discovery is being thwarted by the absence of a
protective order. The Board's authority to impose the order has been
upheld despite a challenge raised in a petition to the Commissioner.
See Petition Decision Nos. 01-515 (July 2, 2002) and 01-515(r) (August
7, 2003), arising out of Opposition No. 91112956 (the latter petition
decision viewable in the TTABVUE electronic proceeding file for the
opposition). While the matter has not been empirically studied, it is
believed that in the vast majority of cases in which the Board has
imposed the order, the parties have complied with it without further
modification. Nonetheless, the standard protective order has always
been subject to supplementation or modification by the parties, upon
agreement approved by the Board or upon motion of any party granted by
the Board. This practice does not change under this final rule.
While many of the comments received in response to the proposed rule
implicitly assume that the universal application of the standard order
to inter partes cases was proposed only because of the initial
disclosures required in the proposed rule, the reason for the rule
change is broader. Universal application of the standard protective
order should reduce some existing motion practice relating to
discovery, regardless of the extent of initial disclosures required by
rule. Accordingly, although this final rule, in response to many
comments, scales back the extent of required initial disclosures,
universal application of the standard protective order remains a part
of this final rule. As noted above, the parties in any inter partes
case are free to negotiate supplementary terms or to substitute an
alternative order to which they may agree; and any party is free to
move for addition of supplementary terms or substitution of a different
order.
As for the comment that addressed possible breach of the protective
order during a proceeding, it is noted that access to a party's
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confidential information is not provided as a matter of course in Board
proceedings and confidential information need only be provided in
response to a proper and relevant discovery request or when the party
chooses to use such information in support of its case at trial. The
imposition of the standard protective order provides assurances to a
party that may need to reveal confidential information in response to a
discovery request, so as to avoid adverse consequences that may result
from failure to respond, or in support of its case at trial. Further,
the attorney or party or any other individual receiving confidential
information in response to a discovery request or during trial, may
only obtain the information if it abides by the standard protective
order's provisions. The standard protective order covers parties and
their attorneys during a proceeding, defining the individuals that are
encompassed by each designation. In addition, each independent expert
or consultant, non-party witness, or individual not falling within the
definition of party or attorney must sign an acknowledgment form
agreeing to be bound by the standard protective order during and after
the proceeding, as a condition for gaining access to protected
information through a party or attorney. Thus, an attorney, party or
non-party individual receiving confidential information does so
voluntarily and, in return for access to the confidential information,
is obligated to the disclosing party and the Board to abide by the
provisions of the protective order, thereby providing the disclosing
party with legal protection for harm it may suffer by any breach.
Allegations of such a breach are very rare or nonexistent in Board
proceedings, and no comment pointed to a reported incident involving
breach. The Board's power to order sanctions for breach during a
proceeding, and the Office's powers to discipline attorneys or sanction
attorneys and parties are viewed as effective deterrents to breach.
As for the comments noting that the standard order does not account for
all circumstances that may be presented by all inter partes cases, the
Office acknowledges the accuracy of these observations. However, the
Office also notes the standard order was never intended to account for
all situations, and the parties are free to seek additional protections
by agreement or motion. Further, the Board's interlocutory attorneys
have experience dealing with situations in which a party's access to
information may have to be restricted or precluded, including
situations involving pro se parties.
As for the comments noting that universal application of the standard
order does not assist parties if protected information is revealed
after the conclusion of a proceeding, it is not at all clear that
parties can be compelled to enter contracts that will govern their
actions after the Board proceeding has concluded. While the Board
encourages parties to consider creating a contract, the parties are
responsible for the protection of their confidential information
outside of a Board proceeding. See Fort Howard Paper Co. v. G.V.
Gambina Inc., 4 USPQ2d 1552 n. 3 (TTAB 1987) ("it is the function of
counsel to decide what is in the best interest of the party"). On the
other hand, because a party receiving confidential information in a
Board proceeding voluntarily takes on obligations that benefit the
disclosing party and the Board, a disclosing party may well have remedy
at law if a breach were to occur after a Board proceeding concluded. In
fact, the TBMP refers to one case in which a claim brought in a federal
district court, alleging breach after conclusion of the Board
proceeding, survived a motion to dismiss. See Alltrade Inc. v. Uniweld
Products Inc., 946 F.2d 622, 20 USPQ2d 1698 n.11 (9th Cir. 1991). In
addition, the standard protective order provides that information or
material disclosed in accordance with the terms of the order is for use
solely in connection with the Board proceeding and must be returned to
the disclosing party at the conclusion of the proceeding. The
obligation to return protected material includes memoranda, briefs,
summaries and the like that discuss or "in any way refer to"
protected information or material. Therefore, opportunities for breach
after a proceeding are very limited. As with the posited situations
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involving breach during a proceeding, allegations of breach after
conclusion of a proceeding are extremely rare.
Comments subject 6 (Discovery Conference): Most comments
did not specifically address the discovery conference requirement. One
comment "generally supports" the conference requirement but did not
add any suggestions or recommendations. One comment suggested that the
final rule specify the subjects to be discussed during the conference.
The same comment recommended that any Board Interlocutory Attorney or
judge that is involved in a conference not be involved in the
management or decision of the case, to ensure impartiality. Finally,
this comment also recommended that the final rule be clarified to
specify that the provision of the federal rules that requires parties,
when in court, to file a written report on their conference is not
applicable in Board proceedings and that a written report would be
necessary in a Board case only when directed by a participating Board
attorney or judge. One comment supportive of the conference requirement
suggested mediation training for Board professionals designated to
conduct conferences. One comment critical of the conference requirement
noted that the proposed rule is silent on the extent of involvement by
a participating Board professional and views the conference as an
unnecessary formality because of the existing flexibility parties have
to manage discovery. One comment argued that counsel experienced in
Board practice will bear a burden of educating pro se parties, foreign
individuals or entities, or even U.S. attorneys that are not well
versed in Board practice. One comment suggested that the availability
of Board professionals to participate in the conferences might create a
burden on the Board. One comment argued that conferences will be more
successful if "a member of the Board were actively involved," and
is taken as a recommendation that an Administrative Trademark Judge
participate, rather than a Board Interlocutory Attorney.
Response: The final rule retains the requirement for a
conference to discuss the nature and basis of the involved claims and
defenses, the possibility of settlement of the case or modification of
the pleadings, and plans for disclosures and discovery. The final rule
has been amended to clarify that the parties shall discuss the subjects
outlined in Federal Rule 26(f) and any other subjects that the Board
may, in an institution order, require to be discussed. Subjects the
Board may require the parties to discuss could include, for example,
plans to supplement or modify the Board's standard protective order, or
to substitute a different order, whether the parties want to seek
mediation, arbitration or to proceed under the Board's Accelerated Case
Resolution option, and whether the parties want to enter into any
stipulations of fact or stipulations as to the manner in which evidence
may be presented at trial. In a conference, parties are free to discuss
any additional topics that could promote settlement or efficient
adjudication of the Board proceeding. Neither Federal Rule 26(f) nor
any listing of subjects for discussion that the Board may include in an
institution order should be read as limiting what the parties may
discuss. This final rule also clarifies that the parties are not
required to file a written report on their discussions except under
certain circumstances.
The Office has chosen not to provide that only Board judges, rather
than Board attorneys, will participate in discovery conferences. It is
anticipated that the Board will provide training to its Interlocutory
Attorneys and Administrative Trademark Judges, so that a Board
professional occupying either position will be able to provide
effective assistance to the parties during a conference. In addition,
while it is anticipated that Board attorneys will participate in
conferences far more often than Board judges, the final rule allows the
Board to draw from both groups of professionals to provide the Board
flexibility in scheduling and deployment of personnel. In this regard,
it is noted that the Board cannot predict the percentage of inter
partes cases in which a party will request involvement of a Board
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attorney or judge. In informal discussions with members of the bar,
predictions of the extent to which parties will request involvement of
a Board professional have varied widely, with some suggesting that
there will be many requests for Board participation and others
suggesting that if Board professionals do not plan to directly and
substantially involve themselves in detailed settlement discussions,
then requests for Board involvement in conferences may be limited.
The Office anticipates that Board professionals involved in conferences
will fill the educator's role that one comment suggested would have to
be filled by experienced counsel. Any experienced counsel who fears
being forced into the role of educator for a pro se adversary or less
experienced adverse counsel can request the participation of a Board
professional. The extent of involvement of a Board professional in a
conference will necessarily vary depending on the relative expertise
and needs of the parties and/or their counsel.
The Office anticipates that involvement of a participating Board
professional in the settlement aspect of a conference will be rather
limited, in comparison to the involvement of a district court judge.
The Board professional may ascertain whether the parties have had
settlement talks and whether they have made progress, may ensure that
the parties know about mediation, arbitration and the Board's
Accelerated Case Resolution option, and may inquire whether the parties
desire additional time after the conference to discuss settlement. The
Office does not anticipate, though it cannot rule out, participation of
a Board professional in discussions concerning assignments, licenses,
restrictions on use, conditions of phase-out agreements, terms of
consent agreements or the like. Similarly, in discussing claims and
defenses and possible amendment of pleadings, it is anticipated that
involved Board professionals will limit their observations to whether
claims or defenses are within the Board's jurisdiction and the relative
difficulty of proving a particular claim or defense, given the
applicable law. It is unlikely a Board professional will be directly
involved in discussions about what evidence a party believes it will be
able to use to support a claim or defense, the good faith or bad faith
of a party, or the relative equities of the parties' respective
positions. Because the Office does not anticipate that Board
professionals typically will be intimately involved in discussing
possible terms of settlement, or providing evaluations of a particular
party's chances of success on a particular claim or defense, it is not
anticipated that a Board professional's involvement in these aspects of
the discovery conference will present a risk that the Board
professional will become partial to one party or another. The other
aspect of conferences, i.e., discussing plans for disclosure and
discovery will involve a more mechanical exercise. Involved Board
professionals will participate as needed to confirm for the parties how
Board rules and applicable federal rules operate, answer questions the
parties may have about deviating from those rules, and to aid the
parties in crafting a plan that will ensure efficient compliance with
obligations.
Comments subject 7 (Initial Disclosures): Perhaps the
greatest source of concern and most frequently addressed subject was
the proposal for initial disclosures that would obviate the need for a
party to seek certain information through service of discovery
requests. The proposed rule did not specify what should be disclosed,
as does Federal Rule 26(a)(1), but the "Background" section of the
notice of proposed rule making noted that a party generally would be
found to have met its initial disclosure obligations if the party
provided information to adverse parties on any of a number of
particular subjects, "as applicable in any particular case." Many
comments reflected an assumption that every party, in every case, would
be required to make initial disclosures on the subjects listed in the
Background section of the NPRM, and argued that such a requirement
would be more onerous than the subjects covered by Federal Rule
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26(a)(1). Numerous comments argued that disclosure would burden larger
plaintiffs and foreign parties more than pro se or small entity
defendants or applicants whose applications are based on intent to use.
However, one comment argued that a small entity or pro se party would
suffer the greater burden. One comment suggested that much information
about a party, especially a large party, can be obtained from the
internet and disclosures or discovery then become merely a tool for
harassment of the large party.
Numerous comments argued that disclosures should not be required until
it is clear that a defendant intends to defend the action, which would
be shown by the filing of an answer. Many comments noted that most
Board cases settle and therefore initial disclosures will be
unnecessary in most cases. Other comments asserted that traditional
discovery devices work well enough and that initial disclosure is not
necessary. One comment asserted that disclosure would require a party
to disclose information helpful to its adversary and that the Board
proposal to allow introduction of disclosures in the same way that
discovery responses may be introduced in a Board proceeding would put
the disclosing party in the position of aiding its adversary. Some
comments asserted that once a party has made significant disclosures it
will be less likely to settle. Some comments argued that initial
disclosures would lead to increased motion practice regarding the
sufficiency of disclosures and/or whether sanctions should be entered
for failure to make sufficient disclosures.
Some comments supported the use of initial disclosures in principle but
concluded the proposed rule requires further clarification. These
comments suggested that disclosure obligations be articulated in the
trademark rules themselves and not in the Background or Supplementary
Information section of a notice of rule making or on the Board web
site. Among those who offered alternatives to the proposed rule, some
proposed that the Board follow Federal Rule 26(a)(1)(A) & (B), or
include in a trademark rule language roughly akin to the federal rule.
Others suggested the federal rule as a starting point, with some
additional disclosures reflective of what is generally at issue when a
particular claim or defense is pleaded. Some comments distinguished
between reasonable disclosure of "objective" or "fact neutral"
matters and disclosure of subjective, overbroad or irrelevant
information. Many comments argued for clarification that disclosures
may be amended or supplemented.
Response: This final rule adopts the oft-suggested
alternative of requiring only those initial disclosures set forth in
Federal Rule 26(a)(1) (one comment stated "the resources involved in
producing this information are relatively minimal"). Thus, the Office
has not adopted suggested alternatives that would require any
additional disclosures, even if such matters might be considered
"objective" or "fact neutral." In fact, though the Board in its
January 1994 Official Gazette announcement stated that it would not
follow many of the Federal Rules of Civil Procedure as amended in
December 1993, much of this final rule constitutes an effective
retraction of that announcement. Much more Board practice will now
follow the federal rules. Thus, the Office has decided that disclosure
practice will be more predictable if only those initial disclosures
contemplated by the federal rule are required in Board proceedings.
Many of the arguments against initial disclosures may have been rooted
in the perception that every party in every case would have to disclose
information regarding the list of subjects contained in the Background
section of the proposed rule. Accordingly, since the initial
disclosures required by this final rule will be much more limited,
numerous comments no longer require a response. However, it is
understood that numerous comments may also have been intended to apply
to any form of required initial disclosures and are addressed as
follows.
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The Office has concluded that the relative burden for parties making
initial disclosures is not a function of Federal Rule 26(a)(1) or the
application of Federal Rule 26 to Board proceedings by Trademark Rules
2.116 and 2.120 but, rather, reflects the position the party occupies
in the case and the claims or defenses the party chooses to assert. No
comments asserted that Federal Rule 26(a) (1) creates unequal burdens
and no comments asserted that utilization of initial disclosures in the
district courts routinely creates unequal or unfair burdens. There is
no effective means for ensuring that every party to every case will
have to exert the same effort to comply with the requirement for
initial disclosures. Information gleaned from the internet about an
adverse party, and initial disclosures or discovery responses from that
party, are not of equal evidentiary value. In fact, in cases before the
Board, it is not unusual for motions to compel to result from discovery
responses that do not provide information or documents and instead
refer the inquiring party to a web site. Therefore, the potential that
disclosure or discovery rules could be used to harass an adversary is
not seen as sufficient reason to rely on the availability of the
internet as a sufficient substitute for disclosure and discovery
procedures. A motion for a protective order is available to any party,
large or small, that believes it is the subject of harassment by an
adversary.
The argument that disclosure should not be necessary if a defendant
defaults and that initial disclosures will not be necessary in the
large percentage of Board cases that settle is dealt with infra in the
discussion regarding the disclosure, discovery and trial schedule for a
case proceeding under this final rule. Comments that predict increases
in motion practice, or seek clarification regarding certain motions
related to disclosures, are dealt with below, but also are addressed
infra in the discussion of the comments regarding particular types of
motions relating to disclosures.
It is not the Board's experience that traditional discovery requests
always work so well as a mechanism for the exchange of routine
information that initial disclosures would be of limited utility. As
utilized in the district courts, and as it is expected they will be
utilized in Board inter partes cases, initial disclosures eliminate the
cost and time associated with seeking core information regarding the
existence of and location of witnesses and documents. While the
introduction of the use of initial disclosures in the courts prompted
criticism that undue satellite litigation would result, the empirical
study referenced in the Supplementary Information section did not find
that to be a significant problem. Because the Board is adopting the
same initial disclosure approach utilized in the district courts, it is
likewise expected that there will not be significant problems with
satellite litigation in Board cases. Moreover, the argument that
initial disclosures unfairly require a party to aid its adversary was
raised in connection with disclosure in the district courts under the
federal rules. However, this has not been the case. Further, it appears
that this concern may have been rooted in the perceived need to
disclose more information under the proposed rule than is required by
this final rule.
While some comments contended that parties to Board proceedings should
not be able to introduce written disclosures or disclosed documents as
affirmative evidence, the limited initial disclosures contemplated by
this final rule are not expected to provide many opportunities to
utilize the disclosures as evidence. For example, the identification of
witnesses and identifying information is itself of little evidentiary
value. On the other hand, the Office notes that a party making initial
disclosures has the option to produce copies of documents instead of
disclosing information about the existence and location of documents.
If copies of documents are produced in lieu of providing descriptions
of documents and their locations, then these documents may have
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evidentiary value and the final rule merely proposes that they be
treated in the same way as documents produced in response to discovery
requests. In addition, if parties agree in a discovery conference to
make greater use of reciprocal written disclosures of facts, as a less
expensive mechanism for exchanging information than traditional
discovery, then the written disclosures should be treated the same as
discovery responses.
The provision of Federal Rule 26(e) regarding supplementation of
disclosures and discovery responses will be applicable to Board inter
partes proceedings.
Comments subject 8 (Interrogatory Limit): As with other
subjects, comments on the proposed limit on the number of
interrogatories varied. Some comments supported either the proposed
limit of twenty-five (25) or something lower than the existing limit of
seventy-five (75). Other comments, however, argued that reduction of
the limit on the number of interrogatories would have adverse
consequences. Among this latter group of comments, some noted that a
reduction in interrogatories may lead to an increase in discovery
depositions, which are more costly; others suggested that more motion
practice may result, whether from parties seeking leave to exceed the
limit or from parties objecting to interrogatories alleged to be in
excess of the limit. One comment observed that if the Office was
responsive to comments calling for less extensive mandatory initial
disclosures, then the need for more interrogatories would remain. Some
comments noted that although the federal courts have a limit of
twenty-five (25) interrogatories, the courts generally do not count
subparts, while the Board does, so a reduction in the limit without a
change in reduction.
Response: A number of the comments against reducing the
limit on interrogatories make a persuasive case why the limit should
remain unchanged. Because the Board's practice of counting subparts is
different from the practice in many courts, those familiar with Board
practice have developed an understanding of the counting methodology.
In addition, interrogatories are more cost-effective than depositions
and have more utility when dealing with certain parties or in more
complicated cases with numerous issues. Accordingly, the Office
retracts the proposal to further limit interrogatories. The methodology
for counting interrogatories shall remain unchanged.
Comments subject 9 (Expert Disclosures): Several comments
observed that a distinction needed to be drawn between
consulting/non-testifying experts, who should not be covered by
disclosure rules, and testifying experts, who could be covered by
disclosure rules. Other comments noted that the proposed rule did not
specify, as does Federal Rule 26(a)(2), the extent of the disclosures
to be made about expert witnesses, their qualifications, bases for
their testimony and the like. A common concern was that the proposed
rule called for disclosure of experts too early in discovery, because
most parties will not decide whether to use experts until late in
discovery or after discovery but prior to trial. Numerous comments
suggested that expert disclosure not occur until after fact discovery
was completed. Several related comments suggested that disclosure of
experts be staggered, with plaintiff's disclosure followed by
defendant's, followed by plaintiff's rebuttal. Some comments suggested
tracking the Federal Rule 26(a)(2) provisions on when expert disclosure
should occur. One comment suggested that the Office make clear that a
resetting of the closing date for discovery would result in a resetting
of the deadline for expert disclosure(s). While the proposed rule
recognized that in some instances a party may not decide to use an
expert witness at trial until after discovery had closed, and required
prompt disclosure when the expert was retained after the close of
discovery, one comment suggests that this provision may lead to abuse.
Another comment requested further clarification on the availability of
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motions to strike or exclude expert testimony for untimely or
insufficient disclosure. Almost universally, comments acknowledged that
retention of an expert witness is likely to be quite expensive and is
not frequently done in Board proceedings.
Response: The Office acknowledges the need to clarify
aspects of the proposed rule as noted in various comments. The final
rule provides for disclosure of expert testimony. This clarifies that
disclosure of consulting experts is not required. In addition, the
final rule specifies that disclosure of expert testimony shall occur in
the manner and sequence of Federal Rule 26(a)(2), unless the Board
provides alternate instructions in an institution order or subsequent
order. This clarifies that the information to be disclosed is that
provided for in the federal rule. As in the federal rule, this final
rule allows the Board to specify staggered disclosure schedules, when
necessary or appropriate, but specifies that in the absence of such
direction by the Board, disclosure will occur in accordance with the
federal rule. Because the federal rule requires disclosure ninety (90)
days prior to trial, as applied in Board proceedings that will mean
expert disclosures will occur with thirty (30) days remaining in the
discovery period. The federal rule also allows for disclosure of a
testifying expert retained solely to contradict or rebut the
anticipated testimony of another party's expert thirty (30) days after
the disclosure by the other party.
This provision will likewise apply to Board practice.
As many of the comments noted, expert testimony is expensive and
typically not utilized in Board proceedings. Accordingly, detailed
information in the final rule setting forth deadlines for staggered
expert disclosures after discovery and prior to trial is not included.
Such provisions would delay trial in the vast majority of cases that do
not involve use of expert testimony. Instead, the final rule provides
the Board with flexibility to make any orders necessary to accommodate
disclosure of experts and discovery regarding experts in the rare cases
when expert testimony may be used. Following Federal Rule 26(a)(2) and
allowing the Board flexibility to manage the disclosure and discovery
process makes it unnecessary to include in the final rule a specific
statement that expert disclosure deadlines will be reset when the close
of the discovery period is reset. As noted, because of the potential
for abuse when an expert is retained after the disclosure deadline set
forth in the federal rule, or any deadline that may be specified by the
Board in any order it may issue, the final rule also specifies that a
party retaining a testifying expert after the deadline for disclosure
will have to seek leave from the Board to utilize the expert. The Board
anticipates deciding any such motion promptly or suspending proceedings
until the motion can be decided, and the amended rule allows the Board
flexibility to choose either option.
Comments subject 10 (Pretrial Disclosures): Some comments
suggested that pretrial disclosures are not necessary and there is
little in the way of unfair surprise testimony in Board proceedings.
One comment suggested that a pretrial disclosure deadline fifteen (15)
days prior to trial, instead of the proposed thirty (30) days prior to
trial, should be sufficient. A related comment suggested that
disclosure deadlines be staggered, as are the testimony periods in
Board cases. Two comments argued for clarification of certain terms or
phrases in the proposed rule and one of these offered suggested
alternate language. Some comments addressed the ramifications of
inadequate or improper disclosure and/or the availability of motions
directed to asserted inadequate or improper disclosure.
Response: For the Board cases that go through trial,
motions to quash testimony depositions or to strike testimony after it
has been taken are not frequent but, when filed, are particularly
disruptive. Claims of unfair surprise due to asserted inadequate
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discovery responses and claims of improper or insufficient notice
although not frequent are not unusual. While one comment suggested that
the 30-day intervals between the parties' respective testimony periods
provide opportunities to ameliorate the ill effects of unfair surprise,
the Board's experience is to the contrary. Because trial is conducted
without a Board professional present, there is little opportunity for
swift rulings on motions alleging unfair surprise and when such motions
arise, testimony periods often need to be adjusted or reset. The
requirement for limited pretrial disclosures of the witnesses a party
expects to present or may present if needed is maintained in this final
rule. The suggestions to stagger pretrial disclosures and to schedule
the first such disclosure closer to the time of trial have been adopted
and are included in the final rule. The final rule also includes
clarifying language on what is necessary to identify a witness and the
expected topics of the planned testimony of the witness. The subject of
motions addressing asserted improper or inadequate disclosure is
covered below in the discussion of comments on motions relating to all
required disclosures and the obligation to supplement required
disclosures.
Comments subject 11 (Scheduling Issues; Accommodating Settlement
Talks): Some comments argued for clarification that initial
disclosures would not be required of a plaintiff if a defendant did not
file an answer. One of these suggested that the de facto stay of
initial disclosure obligations when there is a default or a motion
under Federal Rule 12 be codified in any final rule. Some comments
argued that the Board should be willing to suspend cases for settlement
talks in the period after answer is filed but prior to a discovery
conference. One comment posited that the 180-day (approximately six-
month) discovery period is effectively shortened by thirty (30) days
under the proposed rule, because a party may not seek discovery until
it has made its initial disclosures and they are not due until thirty
(30) days into the discovery period. One comment argued that
proceedings in a case should not be suspended when a motion to compel
disclosure or discovery is filed. The same comment sought clarification
that a party should not be able to serve discovery after a motion to
compel is filed but prior to issuance of a suspension order by the
Board. A different comment sought clarification as to whether discovery
requests can be served after issuance of a Board order suspending
proceedings because a discovery motion has been filed. Two comments
sought inclusion of entire proceeding schedules in the rules, i.e., all
pleading, disclosure, discovery, and trial deadlines in a proceeding,
rather than having the proceeding schedule set in an institution order.
Response: The proposed rule, and this final rule, provides
that initial disclosures are not due until 30 days after discovery
opens. Discovery itself does not open until 30 days after an answer is
filed by a defendant. Thus, in any case of default or in any case in
which a defendant files a motion under Federal Rule of Civil Procedure
12 directed to plaintiff's pleading, the Board will reset discovery,
disclosure and trial dates. Similarly, when a defendant includes a
counterclaim with its answer, the Board must reset these dates to
account for the addition of the counterclaim. In short, there are many
potential triggers that will prompt the Board to reset discovery,
disclosure and trial dates and any attempt to codify them all in § 2.120
would be cumbersome. The final rule states that disclosure
obligations may be reset by order of the Board and the Supplementary
Information section of this final rule addresses the ways in which the
Board may exercise this authority.
The Board has traditionally been very liberal in its willingness to
suspend cases to accommodate settlement negotiations between parties.
This practice is not codified in the trademark rules and will remain a
discretionary practice that the Board may alter as necessary without
need for any change in the rules. However, the Office clarifies that
this final rule does not alter that traditional liberal approach except
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in one instance, namely, the Board is unlikely to suspend cases for
settlement talks between the time an answer is filed and the deadline
for a discovery conference. One point of the conference is for the
parties to either discuss settlement or at least discuss whether, in
light of the answer and the close of the pleadings, they may have a
basis to begin settlement talks. In essence, comments calling for the
Board to allow for suspension after answer but before the discovery
conference do not address a proposed change in a rule but, rather, only
address Supplementary Information included in the proposed rule.
Accordingly, no change has been made in the final rule to codify
discretionary practices relating to suspension to accommodate
settlement talks.
A party's initial disclosures are due within thirty (30) days after
discovery opens but may be served as soon as the party wishes. Given
that both parties, once the pleadings are closed, should be able to
start preparing their disclosures, and given the scaled back number and
extent of disclosures required by this final rule, the parties may be
able to exchange disclosures at their discovery conference or soon
thereafter. In short, the parties can effectively use the entire
180-day period for discovery if they are prompt with service of their
initial disclosures.
When the Office amended certain trademark rules governing Board
practice in 1998, it included provisions providing for suspension of
cases until discovery motions are decided. It may be possible for
parties to continue with discovery activities while other discovery
matters involved in discovery motions are decided, especially when the
case is in the early part of the discovery period. However, the Board
receives many motions relating to discovery late in the discovery
period or after the discovery period has closed but prior to trial. In
these cases in particular, it is more efficient to suspend proceedings
and stay trial until discovery matters have been resolved. It would be
cumbersome to have different rules governing suspension for discovery
motions, depending on when such motions are filed. Accordingly, the
Office retains the rule providing for suspension as a matter of course.
The final rule has, however, been amended in response to some comments
to prevent service of additional discovery requests after filing and
service of a motion relating to discovery, even prior to the Board's
issuance of a suspension order.
The entire discovery and trial schedule, including disclosure
deadlines, has not been included in the final rule. Dates must be reset
when a defendant files a counterclaim, and often are reset once issues
relating to a defendant's default or a defendant's motions under
Federal Rule 12 are decided. Accordingly, it would be cumbersome and
unwieldy to craft a rule that would account for all possible
circumstances and permutations of dates.
Comments subject 12 (Motions relating to Disclosures): One
comment argued that "all-encompassing" initial disclosures would
lead to motions to compel such disclosures, motions challenging the
sufficiency of such disclosures and motions to preclude introduction of
testimony, documents or other evidence because of inadequate
disclosures. Numerous other comments also asserted that such satellite
litigation would result from the proposed required disclosures. Some of
these comments suggested that such problems could be limited by
adopting the disclosures of Federal Rule 26. One comment asserted that
the Board lacks adequate sanctioning authority to stem evasive and
incomplete discovery responses and may face the same problem with
disclosures. Some comments sought clarification that supplementation of
disclosures will be permitted and implied that this may ameliorate some
motion practice relating to disclosures. One comment sought
clarification that a party may move to strike or preclude expert
testimony for improper or untimely disclosure. One comment suggested
that a final rule permit motions to strike portions of testimony for
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inadequate or improper pretrial disclosure. One comment sought an
explanation why a motion for sanctions for a party's failure to
participate in a discovery conference must be filed prior to the due
date for initial disclosures and also argued that if such a motion is
filed proceedings should be suspended. Two comments argued that a party
should be permitted to file a motion for summary judgment prior to
making its initial disclosures if the ground for the motion for summary
judgment is unrelated to the disclosures. One comment argued for, on
the one hand, specification of the consequences for a party's failure
to meet the deadline for pretrial disclosures and, on the other hand,
procedures available to a party attempting to remedy its failure to
make pretrial disclosures. This comment also sought clarification
whether a party would have to respond to a motion for summary judgment
if it believed the moving party had not made adequate initial
disclosures, the process for determining whether an initial disclosure
was adequate, clarification of the penalties for inadequate initial
disclosures and clarification whether a party seeking imposition of
such penalties would have to file a motion to compel. Another comment
also sought addition of a rule specifying the consequences for failing
to disclose facts as of the initial disclosure deadline.
Response: When the Federal Rules of Civil Procedure were
amended to require disclosures, many commentators suggested that
significant satellite litigation would result. The actual result was
not nearly as severe as feared. Further, most of the comments advancing
similar arguments in response to the proposed rule appear to be based
on the extent and number of initial disclosures perceived to be a part
of the proposed rule, which are significantly scaled back in this final
rule. Specific consequences for failure of a party to make timely,
proper or adequate disclosures have not been set out in the final rule.
The Board must retain the discretion to tailor sanctions to the
particular circumstances of each case. However, the final rules have
been clarified in certain respects. A party may seek to strike any
testimony or portions of testimony, whether or not from an expert, when
related disclosures were untimely, improper or inadequate. The rule has
been clarified to state that a motion to strike testimony of a witness
for inadequate pretrial disclosure may seek to strike that portion of
the testimony that was not adequately covered by the disclosure.
A motion for sanctions for a party's failure to participate in the
discovery conference must be filed prior to the deadline for initial
disclosures because one subject for discussion in such a conference is
disclosure. Further, if the motion seeks a sanction that is potentially
dispositive of the case, a suspension order is issued under the
existing rules and no further amendment is needed to so specify. A
motion to compel is the available remedy when an adversary has failed
to make, or has made inadequate, initial disclosures or disclosures of
expert testimony. Both of these types of disclosures are made during
discovery, and a motion to compel must precede a motion for sanctions.
A motion for sanctions is only appropriate if a motion to compel these
respective disclosures has already been granted. In contrast, pretrial
disclosures are not a discovery activity, and a motion to compel is not
available. Accordingly, the approach varies when an adversary does not
make pretrial disclosures, or provides inadequate pretrial disclosures.
The possibilities include a motion for sanctions, a motion to quash a
notice of testimony deposition, or a motion to strike testimony,
depending on the circumstances.
The requirement that a party make its initial disclosures before filing
a motion for summary judgment, except for motions based on claim or
issue preclusion or asserted lack of jurisdiction of the Board, is
retained in the final rules. Given the scaled back nature of initial
disclosures, making the required disclosures should not prove a
significant obstacle to a party that decides to seek summary judgment
on any other ground.
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Comments subject 13 (Briefing of Motions): One comment
argued that the proposed rule results in a de facto reduction in the
page limit for briefs on motions.
Response: The proposed rule only reflects current practice
and does not reduce the stated page limit for motions on briefs. This
final rule adopts the clarifying language presented by the proposed
rule.
Comments subject 14 (Removal of option to file materials on
CD-ROM): One comment noted that restrictions on CD-ROM
submissions may not be imposed by the courts and stated the assumption
that the Office might reconsider permitting such submissions if
improvements in technology make them more suitable for the Board to
handle. One comment supported the proposal.
Response: The Office is willing to reconsider allowing
submissions by CD-ROM in inter partes trademark proceedings if
technology eventually will allow such submissions to be efficiently
incorporated in the Board's electronic proceeding files. The removal of
the option to file materials on CD-ROM is adopted in this final rule.
Rule Making Considerations:
Regulatory Flexibility Act: For the reasons set forth
herein, the Deputy General Counsel for General Law of the United States
Patent and Trademark Office has certified to the Chief Counsel for
Advocacy of the Small Business Administration that the changes in this
final rule will not have a significant economic impact on a substantial
number of small entities. See 5 U.S.C. 605(b).
The United States Patent and Trademark Office (Office) is amending its
rules in 37 CFR Part 2 governing initiation of inter partes proceedings
at the Trademark Trial and Appeal Board (Board) and the prosecution and
defense of such proceedings, and making corrections or modifications
that conform rules to current practice. There are no new fees or fee
changes associated with any of the final rules.
The changes in this final rule involve interpretive rules, or rules of
agency practice and procedure, and prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553(b)(A) (or any
other law). Because prior notice and an opportunity for public comment
were not required for the changes in the proposed rule, a Regulatory
Flexibility Act analysis was also not required. See 5 U.S.C. 603.
Nevertheless, the Office published a notice of proposed rule making in
the Federal Register and in the Official Gazette of the United States
Patent and Trademark Office, in order to solicit public participation
with regard to this rule package.
The primary changes in this rule are: (1) plaintiffs will serve certain
papers (complaints or claims of right to a concurrent use registration)
directly on defendants, and (2) parties will, on a reciprocal basis,
identify individuals with knowledge that could be used to support their
claims or defenses and identify the existence and location of documents
which could support their claims or defenses, will disclose, as part of
the discovery phase, expert witnesses to be used during the trial phase
of Board proceedings, and will, during a pretrial phase, disclose the
identify of witnesses the party expects to call during trial.
These rules will not have a significant economic impact on large or
small entities.
With regard to the first change, very little (if any) additional cost
is associated with the rules because plaintiffs must currently serve
these papers on the Office, which, in turn, serves the papers on the
defendants. Changing the recipient of the papers will not have a
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significant economic impact on any party to a Board proceeding. With
regard to the second change, very little (if any) additional cost is
associated with these rules because under current Board procedures,
parties are obligated to provide almost all of this information, when
requested through discovery. This rule simply affects when the
information is exchanged and eliminates the need for a party to incur
expenses associated with preparing requests for the information.
The rules also contemplate many instances in which parties may avoid
disclosure obligations otherwise provided for by the rules. For
example, if a case is suspended to allow the parties to discuss
settlement, as occurs in the vast majority of Board cases, no
disclosure would be required during settlement talks. In addition,
parties can stipulate, subject to approval of the Board, that
disclosure is not necessary in a particular case and can specify their
own plans for exchanging information.
One comment received in response to the notice of proposed rule making
specifically addressed the Regulatory Flexibility Act, making two
points: First, the requirement that a plaintiff serve a copy of its
complaint on the defendant will create a burden. Second, the
requirement that any party must, under certain circumstances, make
particular disclosures will be a burden. The Office does not find the
arguments persuasive, for reasons that follow:
(1) In regard to the service requirement, the final rule has been
clarified in response to many comments and has been scaled back from
the proposed rule. Under existing practice, every plaintiff, including
a small business, must serve a copy of every paper the plaintiff files
during a proceeding on the defendant. See 37 C.F.R. § 2.119. During
the course of a proceeding, this could amount to many filings. The sole
exception is the plaintiff's initial pleading or complaint. Id. The
final rule merely requires that the single filing (the pleading or
complaint) that does not currently carry a service requirement will now
be treated the same as all other filings and carry such a requirement.
Thus, this is not a significant economic burden on any plaintiff. In
addition, while parties could not previously meet the service
requirement by using electronic transmissions (e-mail or fax), the
final rule allows for such forwarding of service copies, when the
parties agree to use of that form of communication. Since many parties
now routinely use e-mail or fax to communicate, the Board expects that
the vast majority of parties will agree to use of e-mail or fax and
this will facilitate compliance with the requirement for service of the
complaint. For this reason, too, the amended service requirement will
not create a significant economic burden on any plaintiff.
(2) In regard to the disclosure requirements, there are three types of
disclosures called for under the final rule. There are initial
disclosures, disclosures of expert witnesses expected to testify, and
pretrial disclosures. Because ninety-five percent or more of Board
cases settle, and most of these settle or can be settled at a point in
the process where none of the disclosure obligations will have arisen,
the requirements for disclosures should not create a significant
economic burden for most parties. Even in cases that do not settle,
parties are free to agree to greater or lesser use of disclosures,
subject to approval of their agreement by the Board, and can therefore
modify their reciprocal responsibilities in whatever manner they
believe will promote an efficient and fair procedure.
For the small percentage of cases that proceed far enough that initial
disclosures will be necessary and where the parties have not by
agreement modified their obligations, the number and breadth of initial
disclosures have been scaled back significantly from the proposed rule.
The final rule essentially requires a party only to identify
individuals who are knowledgeable about matters for which the party
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bears the burden of proof, and to identify the existence and location
of documents that would help the party bear its burden of proof. These
types of information must currently be provided anyway, if a party's
adversary asks, and most parties that do not settle prior to discovery
do ask not only for these items of information but for much more. Thus,
initial disclosures merely require a party to provide, without being
asked, a small portion of that which it would routinely be asked to
provide in any case that proceeds into the discovery phase. While the
party must make limited disclosures, it also receives the benefit of
disclosures from its adversary without having to employ costly
discovery requests or motions related thereto, so the requirement for
initial disclosures creates no net adverse economic effect.
Disclosure of expert testimony will not create a significant economic
burden on any business, including a small business, because expert
witnesses are so expensive to employ that even large entities utilize
experts in only the rarest of cases. Under current practice, plans to
use experts must be revealed if the party is asked; so, again, the rule
only requires a minimal disclosure without the need for an adverse
party to serve discovery requests. For any party that does retain an
expert, any additional expense associated with disclosures would be
minimal, compared to the expense of retaining the expert.
Finally, pretrial disclosures only require that a party, in advance of
the presentation of its testimony, inform its adversary of the names
of, and certain minimal identifying information about, the individuals
who are expected to testify at trial. The benefits to all parties of
knowing in advance what witnesses will be presented, so parties can
prepare for trial and avoid surprise witnesses, far outweigh the
negligible expense associated with informing adverse parties of
witnesses who will be presented at trial.
For these reasons, the Office has concluded that none of the three
types of required disclosures will have a significant net adverse
economic effect on any parties, including small businesses.
Executive Order 13132: This rule making does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
Executive Order 12866: This rule making has been
determined to be not significant for purposes of Executive Order 12866
(Sept. 30, 1993).
Paperwork Reduction Act: The proposed amendments to
the Trademark Trial and Appeal Board Rules did not impose any
collection of information requirements within the meaning of the
Paperwork Reduction Act of 1995 (44 U.S.C. 3501, et seq.) (PRA).
Accordingly, the PRA did not apply to the proposed amendments. This
final rule also does not impose any such requirements.
Interested persons are requested to send comments to the Office of
Information and Regulatory Affairs, Office of Management and Budget,
New Executive Office Building, Room 10202, 725 17th Street, N.W.,
Washington, D.C. 20503, Attention: Desk Officer for the Patent and
Trademark Office; and (2) Gerard F. Rogers, Trademark Trial and Appeal
Board, P.O. Box 1451, Alexandria, VA, 22313-1451.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
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37 CFR Part 2
Administrative practice and procedure, Trademarks.
For the reasons set forth in the preamble, and under the authority
contained in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, 37 CFR Part 2
is amended as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR part 2 continues to read
as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Revise § 2.99(b), (c) and (d)(1) to read as follows:
§ 2.99 Application to register as concurrent user.
*****
(b) If it appears that the applicant is entitled to have the
mark registered, subject to a concurrent use proceeding, the mark will
be published in the Official Gazette as provided by § 2.80.
(c) If no opposition is filed, or if all oppositions that are filed are
dismissed or withdrawn, the Trademark Trial and Appeal Board will send
a notification to the applicant for concurrent use registration
(plaintiff) and to each applicant, registrant or user specified as a
concurrent user in the application (defendants). The notification for
each defendant shall state the name and address of the plaintiff and of
the plaintiff's attorney or other authorized representative, if any,
together with the serial number and filing date of the application. If
a party has provided the Office with an e-mail address, the
notification may be transmitted via e-mail.
(d)(1) Within ten days from the date of the Board's notification, the
applicant for concurrent use registration must serve copies of its
application, specimens and drawing on each applicant, registrant or
user specified as a concurrent user in the application for
registration, as directed by the Board. If any service copy is returned
to the concurrent use applicant as undeliverable, the concurrent use
applicant must notify the Board within ten days of receipt of the
returned copy.
*****
3. Revise § 2.101(a), (b) introductory text and (d)(4) to read
as follows:
§ 2.101 Filing an opposition.
(a) An opposition proceeding is commenced by filing in the
Office a timely notice of opposition with the required fee. The notice
must include proof of service on the applicant, or its attorney or
domestic representative of record, at the correspondence address of
record in the Office, as detailed in §§ 2.101(b) and 2.119.
(b) Any person who believes that he, she or it would be damaged by the
registration of a mark on the Principal Register may file an opposition
addressed to the Trademark Trial and Appeal Board and must serve a copy
of the opposition, including any exhibits, on the attorney of record
for the applicant or, if there is no attorney, on the applicant or on
the applicant's domestic representative, if one has been appointed, at
the correspondence address of record in the Office. The opposer must
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include with the opposition proof of service pursuant to § 2.119 at
the correspondence address of record in the Office. If any service copy
of the opposition is returned to the opposer as undeliverable, the
opposer must notify the Board within ten days of receipt of the
returned copy. The opposition need not be verified, but must be signed
by the opposer or the opposer's attorney, as specified in § 10.1(c)
of this chapter, or other authorized representative, as specified in
§ 10.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)
(iii) are required for oppositions filed through ESTTA under
paragraphs (b)(1) or (2) of this section.
*****
(d)***
(4) The filing date of an opposition is the date of receipt in
the Office of the notice of opposition, with proof of service on the
applicant, or its attorney or domestic representative of record, if one
has been appointed, at the correspondence address of record in the
Office, and the required fee, unless the notice is filed in accordance
with § 2.198.
4. Revise § 2.105(a) and the introductory text of paragraph (c)
to read as follows:
§ 2.105 Notification to parties of opposition proceeding(s).
(a) When an opposition in proper form (see §§ 2.101 and
2.104), with proof of service in accordance with § 2.101(b), has been
filed and the correct fee has been submitted, the Trademark Trial and
Appeal Board shall prepare a notification, which shall identify the
title and number of the proceeding and the application involved and
shall designate a time, not less than thirty days from the mailing date
of the notification, within which an answer must be filed. If a party
has provided the Office with an e-mail address, the notification may be
transmitted via e-mail.
*****
(c) The Board shall forward a copy of the notification to
applicant, as follows:
*****
5. Revise 2.111(a), (b) and (c)(4) to read as follows:
§ 2.111 Filing petition for cancellation.
(a) A cancellation proceeding is commenced by filing in the
Office a timely petition for cancellation with the required fee. The
petition must include proof of service on the owner of record for the
registration, or the owner's domestic representative of record, at the
correspondence address of record in the Office, as detailed in
§§ 2.111(b) and 2.119.
(b) Any person who believes that he, she or it is or will be damaged by
a registration may file a petition, addressed to the Trademark Trial
and Appeal Board, for cancellation of the registration in whole or in
part. Petitioner must serve a copy of the petition, including any
exhibits, on the owner of record for the registration, or on the
owner's domestic representative of record, if one has been appointed,
at the correspondence address of record in the Office. The petitioner
must include with the petition for cancellation proof of service,
pursuant to § 2.119, on the owner of record, or on the owner's
domestic representative of record, if one has been appointed, at the
correspondence address of record in the Office. If any service copy of
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the petition for cancellation is returned to the petitioner as
undeliverable, the petitioner must notify the Board within ten days of
receipt of the returned copy. The petition for cancellation need not be
verified, but must be signed by the petitioner or the petitioner's
attorney, as specified in § 10.1(c) of this chapter, or other
authorized representative, as specified in § 10.14(b) of this chapter.
Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for
petitions submitted electronically via ESTTA. The petition for
cancellation may be filed at any time in the case of registrations on
the Supplemental Register or under the Act of 1920, or registrations
under the Act of 1881 or the Act of 1905 which have not been published
under section 12(c) of the Act, or on any ground specified in section
14(3) or (5) of the Act. In all other cases, the petition for
cancellation and the required fee must be filed within five years from
the date of registration of the mark under the Act or from the date of
publication under section 12(c) of the Act.
(c)***
(4) The filing date of a petition for cancellation is the date of
receipt in the Office of the petition for cancellation, with proof of
service on the owner of record, or on the owner's domestic
representative, if one has been appointed, at the correspondence
address of record in the Office, and with the required fee, unless the
petition is filed in accordance with § 2.198.
6. Remove § 2.113(e) and revise § 2.113(a) and (c) to read as
follows:
§ 2.113 Notification of cancellation proceeding.
(a) When a petition for cancellation in proper form (see §§ 2.111 and
2.112), with proof of service in accordance with § 2.111(b),
has been filed and the correct fee has been submitted, the Trademark
Trial and Appeal Board shall prepare a notification which shall
identify the title and number of the proceeding and the registration(s)
involved and shall designate a time, not less than thirty days from the
mailing date of the notification, within which an answer must be filed.
If a party has provided the Office with an e-mail address, the
notification may be transmitted via e-mail.
*****
(c) The Board shall forward a copy of the notification to the
respondent (see § 2.118). The respondent shall be the party shown by
the records of the Office to be the current owner of the
registration(s) sought to be cancelled, except that the Board, in its
discretion, may join or substitute as respondent a party who makes a
showing of a current ownership interest in such registration(s).
*****
7. Add § 2.116(g) to read as follows:
§ 2.116 Federal Rules of Civil Procedure.
*****
(g) The Trademark Trial and Appeal Board's standard protective
order is applicable during disclosure, discovery and at trial in all
opposition, cancellation, interference and concurrent use registration
proceedings, unless the parties, by stipulation approved by the Board,
agree to an alternative order, or a motion by a party to use an
alternative order is granted by the Board. The standard protective
order is available at the Office's web site, or upon request, a copy
will be provided. No material disclosed or produced by a party,
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presented at trial, or filed with the Board, including motions or
briefs which discuss such material, shall be treated as confidential or
shielded from public view unless designated as protected under the
Board's standard protective order, or under an alternative order
stipulated to by the parties and approved by the Board, or under an
order submitted by motion of a party granted by the Board.
8. Revise § 2.118 to read as follows:
§ 2.118 Undelivered Office notices.
When a notice sent by the Office to any registrant or applicant
is returned to the Office undelivered, additional notice may be given
by publication in the Official Gazette for the period of time
prescribed by the Director.
9. Revise § 2.119(a) and add paragraph (b)(6) to read as follows:
§ 2.119 Service and signing of papers.
(a) Every paper filed in the United States Patent and Trademark
Office in inter partes cases, including notices of appeal, must be
served upon the other parties. Proof of such service must be made
before the paper will be considered by the Office. A statement signed
by the attorney or other authorized representative, attached to or
appearing on the original paper when filed, clearly stating the date
and manner in which service was made will be accepted as prima facie
proof of service.
(b)***
(6) Electronic transmission when mutually agreed upon by the parties.
*****
10. Revise § 2.120, paragraphs (a), (d)(1), (e), (f), (g),
(h)(2), (i), (j) introductory text, (j)(3) and (j)(5) through (8) to
read as follows:
§ 2.120 Discovery.
(a) In general. (1) Wherever appropriate, the
provisions of the Federal Rules of Civil Procedure relating to
disclosure and discovery shall apply in opposition, cancellation,
interference and concurrent use registration proceedings except as
otherwise provided in this section. The provisions of Federal Rule of
Civil Procedure 26 relating to required disclosures, the conference of
the parties to discuss settlement and to develop a disclosure and
discovery plan, the scope, timing and sequence of discovery, protective
orders, signing of disclosures and discovery responses, and
supplementation of disclosures and discovery responses, are applicable
to Board proceedings in modified form, as noted in these rules and as
may be detailed in any order instituting an inter partes proceeding or
subsequent scheduling order. The Board will specify the deadline for a
discovery conference, the opening and closing dates for the taking of
discovery, and the deadlines within the discovery period for making
initial disclosures and expert disclosure. The trial order setting
these deadlines and dates will be included with the notice of
institution of the proceeding.
(2) The discovery conference shall occur no later than the opening of
the discovery period, and the parties must discuss the subjects set
forth in Federal Rule of Civil Procedure 26(f) and any subjects set
forth in the Board's institution order. A Board Interlocutory Attorney
or Administrative Trademark Judge will participate in the conference
upon request of any party made after answer but no later than ten days
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prior to the deadline for the conference. The participating attorney or
judge may expand or reduce the number or nature of subjects to be
discussed in the conference as may be deemed appropriate. The discovery
period will be set for a period of 180 days. Initial disclosures must
be made no later than thirty days after the opening of the discovery
period. Disclosure of expert testimony must occur in the manner and
sequence provided in Federal Rule of Civil Procedure 26(a)(2), unless
alternate directions have been provided by the Board in an institution
order or any subsequent order resetting disclosure, discovery or trial
dates. If the expert is retained after the deadline for disclosure of
expert testimony, the party must promptly file a motion for leave to
use expert testimony. Upon disclosure by any party of plans to use
expert testimony, whether before or after the deadline for disclosing
expert testimony, the Board may issue an order regarding expert
discovery and/or set a deadline for any other party to disclose plans
to use a rebuttal expert. 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. Disclosure deadlines and obligations may be modified upon
written stipulation of the parties approved by the Board, or upon
motion granted by the Board, or by order of the Board. If a stipulation
or motion for modification is denied, disclosure deadlines may remain
as originally set or reset and obligations may remain unaltered. The
parties are not required to prepare or transmit to the Board a written
report outlining their discovery conference discussions, unless the
parties have agreed to alter disclosure or discovery obligations set
forth by these rules or applicable Federal Rules of Civil Procedure, or
unless directed to file such a report by a participating Board
Interlocutory Attorney or Administrative Trademark Judge.
(3) A party must make its initial disclosures prior to seeking
discovery, absent modification of this requirement by a stipulation of
the parties approved by the Board, or a motion granted by the Board, or
by order of the Board. 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 thirty 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.
*****
(d) ***
(1) The total number of written interrogatories which a party
may serve upon another party pursuant to Rule 33 of the Federal Rules
of Civil Procedure, in a proceeding, shall not exceed seventy-five,
counting subparts, except that the Trademark Trial and Appeal Board, in
its discretion, may allow additional interrogatories upon motion
therefor showing good cause, or upon stipulation of the parties,
approved by the Board. A motion for leave to serve additional
interrogatories must be filed and granted prior to the service of the
proposed additional interrogatories and must be accompanied by a copy
of the interrogatories, if any, which have already been served by the
moving party, and by a copy of the interrogatories proposed to be
served. If a party upon which interrogatories have been served believes
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that the number of interrogatories exceeds the limitation specified in
this paragraph, and is not willing to waive this basis for objection,
the party shall, within the time for (and instead of) serving answers
and specific objections to the interrogatories, serve a general
objection on the ground of their excessive number. If the inquiring
party, in turn, files a motion to compel discovery, the motion must be
accompanied by a copy of the set(s) of the interrogatories which
together are said to exceed the limitation, and must otherwise comply
with the requirements of paragraph (e) of this section.
*****
(e) Motion for an order to compel disclosure or
discovery. (1) If a party fails to make required initial
disclosures or expert testimony disclosure, or fails to designate a
person pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of
Civil Procedure, or if a party, or such designated person, or an
officer, director or managing agent of a party fails to attend a
deposition or fails to answer any question propounded in a discovery
deposition, or any interrogatory, or fails to produce and permit the
inspection and copying of any document or thing, the party entitled to
disclosure or seeking discovery may file a motion to compel disclosure,
a designation, or attendance at a deposition, or an answer, or
production and an opportunity to inspect and copy. A motion to compel
initial disclosures or expert testimony disclosure must be filed prior
to the close of the discovery period. A motion to compel discovery must
be filed prior to the commencement of the first testimony period as
originally set or as reset. A motion to compel discovery shall include
a copy of the request for designation or of the relevant portion of the
discovery deposition; or a copy of the interrogatory with any answer or
objection that was made; or a copy of the request for production, any
proffer of production or objection to production in response to the
request, and a list and brief description of the documents or things
that were not produced for inspection and copying. A motion to compel
initial disclosures, expert testimony disclosure, or discovery must be
supported by a written statement from the moving party that such party
or the attorney therefor has made a good faith effort, by conference or
correspondence, to resolve with the other party or the attorney
therefor the issues presented in the motion but the parties were unable
to resolve their differences. If issues raised in the motion are
subsequently resolved by agreement of the parties, the moving party
should inform the Board in writing of the issues in the motion which no
longer require adjudication.
(2) When a party files a motion for an order to compel initial
disclosures, expert testimony disclosure, or discovery, the case will
be suspended by the Board with respect to all matters not germane to
the motion. After the motion is filed and served, no party should file
any paper that is not germane to the motion, except as otherwise
specified in the Board's suspension order. Nor may any party serve any
additional discovery until the period of suspension is lifted or
expires by or under order of the Board. The filing of a motion to
compel any disclosure or discovery shall not toll the time for a party
to comply with any disclosure requirement or to respond to any
outstanding discovery requests or to appear for any noticed discovery
deposition.
(f) Motion for a protective order. Upon motion by a party
obligated to make initial disclosures or expert testimony disclosure or
from whom discovery is sought, and for good cause, the Trademark Trial
and Appeal Board may make any order which justice requires to protect a
party from annoyance, embarrassment, oppression, or undue burden or
expense, including one or more of the types of orders provided by
clauses (1) through (8), inclusive, of Rule 26(c) of the Federal Rules
of Civil Procedure. If the motion for a protective order is denied in
whole or in part, the Board may, on such conditions (other than an
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award of expenses to the party prevailing on the motion) as are just,
order that any party comply with disclosure obligations or provide or
permit discovery.
(g) Sanctions. (1) If a party fails to participate in the
required discovery conference, or if a party fails to comply with an
order of the Trademark Trial and Appeal Board relating to disclosure or
discovery, including a protective order, the Board may make any
appropriate order, including those provided in Rule 37(b)(2) of the
Federal Rules of Civil Procedure, except that the Board will not hold
any person in contempt or award expenses to any party. The Board may
impose against a party any of the sanctions provided in Rule 37(b)(2)
in the event that said party or any attorney, agent, or designated
witness of that party fails to comply with a protective order made
pursuant to Rule 26(c) of the Federal Rules of Civil Procedure. A
motion for sanctions against a party for its failure to participate in
the required discovery conference must be filed prior to the deadline
for any party to make initial disclosures.
(2) If a party fails to make required initial disclosures or expert
testimony disclosure, and such party or the party's attorney or other
authorized representative informs the party or parties entitled to
receive disclosures that required disclosures will not be made, the
Board may make any appropriate order, as specified in paragraph (g)(1)
of this section. If a party, or an officer, director, or managing agent
of a party, or a person designated under Rule 30(b)(6) or 31(a) of the
Federal Rules of Civil Procedure to testify on behalf of a party, fails
to attend the party's or person's discovery deposition, after being
served with proper notice, or fails to provide any response to a set of
interrogatories or to a set of requests for production of documents and
things, and such party or the party's attorney or other authorized
representative informs the party seeking discovery that no response
will be made thereto, the Board may make any appropriate order, as
specified in paragraph (g)(1) of this section.
(h)***
(2) When a party files a motion to determine the sufficiency of an
answer or objection to a request for an admission, the case will be
suspended by the Board with respect to all matters not germane to the
motion. After filing and service of the motion, no party should file
any paper that is not germane to the motion, except as otherwise
specified in the Board's suspension order. Nor may any party
thereafter serve any additional discovery until the period of
suspension is lifted or expires by or under order of the Board. The
filing of a motion to determine the sufficiency of an answer or
objection to a request for admission shall not toll the time for a
party to comply with any disclosure requirement or to respond to any
outstanding discovery requests or to appear for any noticed discovery
deposition.
(i) Telephone and pretrial conferences.
(1) Whenever it appears to the Trademark Trial and Appeal Board that a
stipulation or motion filed in an inter partes proceeding is of such nature
that its approval or resolution by correspondence is not practical, the
Board may, upon its own initiative or upon request made by one or both of
the parties, address the stipulation or resolve the motion by telephone
conference.
(2) Whenever it appears to the Trademark Trial and Appeal Board that
questions or issues arising during the interlocutory phase of an inter
partes proceeding have become so complex that their resolution by
correspondence or telephone conference is not practical and that
resolution would likely be facilitated by a conference in person of the
parties or their attorneys with an Administrative Trademark Judge or an
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Interlocutory Attorney of the Board, the Board may, upon its own
initiative or upon motion made by one or both of the parties, request
that the parties or their attorneys, under circumstances which will not
result in undue hardship for any party, meet with the Board at its
offices for a disclosure, discovery or pretrial conference.
(j) Use of discovery deposition, answer to interrogatory,
admission or written disclosure.
*****
(3)(i) A discovery deposition, an answer to an interrogatory, an
admission to a request for admission, or a written disclosure (but not
a disclosed document), which may be offered in evidence under the
provisions of paragraph (j) of this section, may be made of record in
the case by filing the deposition or any part thereof with any exhibit
to the part that is filed, or a copy of the interrogatory and answer
thereto with any exhibit made part of the answer, or a copy of the
request for admission and any exhibit thereto and the admission (or a
statement that the party from which an admission was requested failed
to respond thereto), or a copy of the written disclosure, together with
a notice of reliance. The notice of reliance and the material submitted
thereunder should be filed during the testimony period of the party
that files the notice of reliance. An objection made at a discovery
deposition by a party answering a question subject to the objection
will be considered at final hearing.
(ii) A party that has obtained documents from another party through
disclosure or under Rule 34 of the Federal Rules of Civil Procedure may
not make the documents of record by notice of reliance alone, except to
the extent that they are admissible by notice of reliance under the
provisions of § 2.122(e).
*****
(5) Written disclosures, an answer to an interrogatory, or an
admission to a request for admission, may be submitted and made part of
the record only by the receiving or inquiring party except that, if
fewer than all of the written disclosures, answers to interrogatories,
or fewer than all of the admissions, are offered in evidence by the
receiving or inquiring party, the disclosing or responding party may
introduce under a notice of reliance any other written disclosures,
answers to interrogatories, or any other admissions, which should in
fairness be considered so as to make not misleading what was offered by
the receiving or inquiring party. The notice of reliance filed by the
disclosing or responding party must be supported by a written statement
explaining why the disclosing or responding party needs to rely upon
each of the additional written disclosures or discovery responses
listed in the disclosing or responding party's notice, and absent such
statement the Board, in its discretion, may refuse to consider the
additional written disclosures or responses.
(6) Paragraph (j) of this section will not be interpreted to preclude
reading or use of written disclosures or documents, a discovery
deposition, or answer to an interrogatory, or admission as part of the
examination or cross-examination of any witness during the testimony
period of any party.
(7) When a written disclosure, a discovery deposition, or a part
thereof, or an answer to an interrogatory, or an admission, has been
made of record by one party in accordance with the provisions of
paragraph (j)(3) of this section, it may be referred to by any party
for any purpose permitted by the Federal Rules of Evidence.
(8) Written disclosures or disclosed documents, requests for discovery,
responses thereto, and materials or depositions obtained through the
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disclosure or discovery process should not be filed with the Board,
except when submitted with a motion relating to disclosure or
discovery, or in support of or in response to a motion for summary
judgment, or under a notice of reliance, when permitted, during a
party's testimony period.
11. Revise paragraphs (a) and (d), and add paragraph (e), to read
as follows:
§ 2.121 Assignment of times for taking testimony.
(a) The Trademark Trial and Appeal Board will issue a trial
order setting a deadline for each party's required pretrial disclosures
and assigning to each party its time for taking testimony. No testimony
shall be taken except during the times assigned, unless by stipulation
of the parties approved by the Board, or upon motion granted by the
Board, or by order of the Board. The deadlines for pretrial disclosures
and the testimony periods may be rescheduled by stipulation of the
parties approved by the Board, or upon motion granted by the Board, or
by order of the Board. If a motion to reschedule any pretrial
disclosure deadline and/or testimony period is denied, the pretrial
disclosure deadline or testimony period and any subsequent remaining
periods may remain as set. The resetting of the closing date for
discovery will result in the rescheduling of pretrial disclosure
deadlines and testimony periods without action by any party.
*****
(d) When parties stipulate to the rescheduling of a deadline
for pretrial disclosures and subsequent testimony periods or to the
rescheduling of the closing date for discovery and the rescheduling of
subsequent deadlines for pretrial disclosures and testimony periods, a
stipulation presented in the form used in a trial order, signed by the
parties, or a motion in said form signed by one party and including a
statement that every other party has agreed thereto, shall be submitted
to the Board.
(e) A party need not disclose, prior to its testimony period, any
notices of reliance it intends to file during its testimony period.
However, no later than fifteen days prior to the opening of each
testimony period, or on such alternate schedule as may be provided by
order of the Board, the party scheduled to present evidence must
disclose the name and, if not previously provided, the telephone number
and address of each witness from whom it intends to take testimony, or
may take testimony if the need arises, general identifying information
about the witness, such as relationship to any party, including job
title if employed by a party, or, if neither a party nor related to a
party, occupation and job title, a general summary or list of subjects
on which the witness is expected to testify, and a general summary or
list of the types of documents and things which may be introduced as
exhibits during the testimony of the witness. Pretrial disclosure of a
witness under this subsection does not substitute for issuance of a
proper notice of examination under § 2.123(c) or § 2.124(b). If a
party does not plan to take testimony from any witnesses, it must so
state in its pretrial disclosure. When a party fails to make required
pretrial disclosures, any adverse party or parties may have remedy by
way of a motion to the Board to delay or reset any subsequent pretrial
disclosure deadlines and/or testimony periods.
12. Revise § 2.122(d)(1) to read as follows:
§ 2.122 Matters in evidence.
*****
(d) ***
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(1) A registration of the opposer or petitioner pleaded in an
opposition or petition to cancel will be received in evidence and made
part of the record if the opposition or petition is accompanied by an
original or photocopy of the registration prepared and issued by the
United States Patent and Trademark Office showing both the current
status of and current title to the registration, or by a current
printout of information from the electronic database records of the
USPTO showing the current status and title of the registration. For the
cost of a copy of a registration showing status and title, see
§ 2.6(b)(4).
*****
13. Revise § 2.123(e)(3) to read as follows:
§ 2.123 Trial testimony in inter partes cases.
*****
(e)***
(3) Every adverse party shall have full opportunity to cross-examine
each witness. If pretrial disclosures or the notice of examination of
witnesses served pursuant to paragraph (c) of this section are improper
or inadequate with respect to any witness, an adverse party may
cross-examine that witness under protest while reserving the right to
object to the receipt of the testimony in evidence. Promptly after the
testimony is completed, the adverse party, to preserve the objection,
shall move to strike the testimony from the record, which motion will
be decided on the basis of all the relevant circumstances. A motion to
strike the testimony of a witness for lack of proper or adequate
pretrial disclosure may seek exclusion of the entire testimony, when
there was no pretrial disclosure, or may seek exclusion of that portion
of the testimony that was not adequately disclosed in accordance with
§ 2.121(e). A motion to strike the testimony of a witness for lack of
proper or adequate notice of examination must request the exclusion of
the entire testimony of that witness and not only a part of that
testimony.
*****
14. Amend § 2.126 as follows:
A. Revise paragraph (a)(6).
B. Remove paragraph (b).
C. Redesignate paragraphs (c) and (d) as paragraphs (b) and (c),
respectively.
§ 2.126 Form of submissions to the Trademark Trial and Appeal Board.
(a)***
(6) Exhibits pertaining to a paper submission must be filed on paper
and comply with the requirements for a paper submission.
*****
15. Revise § 2.127(a), (c), and (e) to read as follows:
§ 2.127 Motions.
(a) Every motion must be submitted in written form and must
meet the requirements prescribed in § 2.126. It shall contain a full
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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 remains as
specified under this section, unless otherwise ordered. Except as
provided in paragraph (e)(1) of this section, a reply brief, if filed,
shall be filed within fifteen 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. The Board will consider no further papers in support
of or in opposition to a motion. Neither the brief in support of a
motion nor the brief in response to a motion shall exceed twenty-five
pages in length in its entirety, including table of contents, index of
cases, description of the record, statement of the issues, recitation
of the facts, argument, and summary. A reply brief shall not exceed ten
pages in length in its entirety. Exhibits submitted in support of or in
opposition to a motion are not considered 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.
*****
(c) Interlocutory motions, requests, and other matters not
actually or potentially dispositive of a proceeding may be acted upon
by a single Administrative Trademark Judge of the Trademark Trial and
Appeal Board or by an Interlocutory Attorney of the Board to whom
authority so to act has been delegated.
*****
(e)(1) A party may not file a motion for summary judgment until
the party has made its initial disclosures, except for a motion
asserting claim or issue preclusion or lack of jurisdiction by the
Trademark Trial and Appeal Board. A motion for summary judgment, if
filed, should be filed prior to the commencement of the first testimony
period, as originally set or as reset, and the Board, in its
discretion, may deny as untimely any motion for summary judgment filed
thereafter. A motion under Rule 56(f) of the Federal Rules of Civil
Procedure, if filed in response to a motion for summary judgment, shall
be filed within thirty days from the date of service of the summary
judgment motion. The time for filing a motion under Rule 56(f) will not
be extended. If no motion under Rule 56(f) is filed, a brief in
response to the motion for summary judgment shall be filed within
thirty days from the date of service of the motion unless 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 for
summary judgment may remain as specified under this section. A reply
brief, if filed, shall be filed within fifteen 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. The Board will consider no further
papers in support of or in opposition to a motion for summary judgment.
(2) For purposes of summary judgment only, the Board will consider any
of the following, if a copy is provided with the party's brief on the
summary judgment motion: written disclosures or disclosed documents, a
discovery deposition or any part thereof with any exhibit to the part
that is filed, an interrogatory and answer thereto with any exhibit
made part of the answer, a request for production and the documents or
things produced in response thereto, or a request for admission and any
exhibit thereto and the admission (or a statement that the party from
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which an admission was requested failed to respond thereto).
*****
16. Revise § 2.129(a) to read as follows:
2.129 Oral argument; reconsideration.
(a) If a party desires to have an oral argument at final
hearing, the party shall request such argument by a separate notice
filed not later than ten days after the due date for the filing of the
last reply brief in the proceeding. Oral arguments will be heard by at
least three Administrative Trademark Judges of the Trademark Trial and
Appeal Board at the time specified in the notice of hearing. If any
party appears at the specified time, that party will be heard. If the
Board is prevented from hearing the case at the specified time, a new
hearing date will be set. Unless otherwise permitted, oral arguments in
an inter partes case will be limited to thirty minutes for each party.
A party in the position of plaintiff may reserve part of the time
allowed for oral argument to present a rebuttal argument.
*****
17. Revise § 2.133 (a) and (b) to read as follows:
§ 2.133 Amendment of application or registration during proceedings.
(a) An application subject to an opposition may not be amended
in substance nor may a registration subject to a cancellation be
amended or disclaimed in part, except with the consent of the other
party or parties and the approval of the Trademark Trial and Appeal
Board, or upon motion granted by the Board.
(b) If, in an inter partes proceeding, the Trademark Trial and Appeal
Board finds that a party whose application or registration is the
subject of the proceeding is not entitled to registration in the
absence of a specified restriction to the application or registration,
the Board will allow the party time in which to file a motion that the
application or registration be amended to conform to the findings of
the Board, failing which judgment will be entered against the party.
*****
18. Revise § 2.142(e)(1) to read as follows:
§ 2.142 Time and manner of ex parte appeals.
*****
(e)(1) If the appellant desires an oral hearing, a request
should be made by a separate notice filed not later than ten days after
the due date for a reply brief. Oral argument will be heard by at least
three Administrative Trademark Judges of the Trademark Trial and Appeal
Board at the time specified in the notice of hearing, which may be
reset if the Board is prevented from hearing the argument at the
specified time or, so far as is convenient and proper, to meet the wish
of the appellant or the appellant's attorney or other authorized
representative.
*****
19. Revise § 2.173(a) to read as follows:
§ 2.173 Amendment of registration
(a) A registrant may apply to amend a registration or to
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disclaim part of the mark in the registration. The registrant must
submit a written request specifying the amendment or disclaimer and, if
the registration is involved in an inter partes proceeding before the
Trademark Trial and Appeal Board, the request must be filed by
appropriate motion to the Board. This request must be signed by the
registrant and verified or supported by a declaration under § 2.20,
and accompanied by the required fee. If the amendment involves a change
in the mark, the registrant must submit a new specimen showing the mark
as used on or in connection with the goods or services, and a new
drawing of the amended mark. The registration as amended must still
contain registrable matter, and the mark as amended must be registrable
as a whole. An amendment or disclaimer must not materially alter the
character of the mark.
*****
20. Revise § 2.176 to read as follows:
2.176 Consideration of above matters.
The matters in §§ 2.171 to 2.175 will be considered in the
first instance by the Post Registration Examiners, except for requests
to amend registrations involved in inter partes proceedings before the
Trademark Trial and Appeal Board, as specified in § 2.173(a), which
shall be considered by the Board. If an action of the Post Registration
Examiner is adverse, registrant may petition the Director to review the
action under § 2.146. If the registrant does not respond to an adverse
action of the Examiner within six months of the mailing date, the
matter will be considered abandoned.
July 19, 2007 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1321 TMOG 160]