(487) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 2
Docket No. 2003-T-009
RIN 0651-AB56
Miscellaneous Changes to Trademark
Trial and Appeal Board Rules
AGENCY: United States Patent and Trademark Office, Commerce
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) proposes
to amend its 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 clarify rules,
conform the rules to current practice, and correct typographical errors or
deviations from standard terminology.
DATES: Comments must be received by March 20, 2006 to ensure consideration.
ADDRESSES: Submit comments by electronic mail (e-mail) to
AB56Comments@uspto.gov. Written comments may be submitted by mail to:
Trademark Trial and Appeal Board, P.O. Box 1451, Alexandria, VA 22313-1451,
attention Gerard F. Rogers; or by hand delivery to Trademark Assistance
Center, Concourse Level, James Madison Building-East Wing, 600 Dulany
Street, Alexandria, Virginia, attention Gerard F. Rogers.
Comments may also be sent by electronic mail message over the Internet
via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web
site (http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal.
FOR FURTHER INFORMATION CONTACT: Gerard F. Rogers, Trademark Trial and
Appeal Board, by telephone at (571) 272-4299, by e-mail to
gerard.rogers@uspto.gov, or by facsimile at 571-273-0059.
SUPPLEMENTARY INFORMATION: The Office proposes to increase the efficiency
of the processes for commencing inter partes cases, in light 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
Office proposes to increase the efficiency by which discovery and pre-trial
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 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. Finally, in addition to the
foregoing non-substantive changes to the rules, the Office proposes minor
modifications necessary to make corrections or updates to certain rules and
conform those rules to current practice.
Background
I. Commencement of Proceedings
The current process by which a plaintiff in a Board proceeding files
notice of its complaint (or claim of right to a concurrent use
registration) requires the plaintiff to prepare as many copies of its
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complaint (or claim of right) as there will be defendants in the action.
The plaintiff is then required to file the requisite copies with the
original, for subsequent forwarding to the defendants. Occasionally, before
the Board can forward the copies to the defendants, the plaintiff will have
to engage in additional correspondence with the Board, to provide the Board
with updated correspondence address information the plaintiff has uncovered
in its investigation of the defendant's application, registration or mark,
particularly in cancellation and concurrent use proceedings.
Under the practice envisioned by the proposed rules, the initiation of
a Board proceeding would become more efficient, because a plaintiff would
be able to serve its copies directly on defendants. Use of a direct service
approach recognizes that plaintiffs and defendants often are in contact
prior to a plaintiff's filing of its complaint or claim, and also
recognizes that continuation of such 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.
(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.)
In recent years, the Board has deployed its ESTTA system, the Electronic
System for Trademark Trials and Appeals, so that virtually all filings a
party may need to submit to the Board 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 proposed rules changes, an opposer or petitioner would file
its complaint with the Board and be 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 therefor, of the defending application
or registration. A concurrent use applicant, however, would 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 was issued by the Board, as discussed below.
A plaintiff would be expected to serve the owner of record according to
Office records, or the domestic representative of the owner of record, as
well as any party the plaintiff believed had an ownership interest (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. The plaintiff would have to
inform the Board of any service copies returned as undeliverable. As for a
concurrent use applicant, 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.
By these proposed changes to the trademark rules, the concurrent use
applicant would directly serve the copies of its application on the
excepted parties after notification by the Board that the concurrent use
application was free of any opposition and the concurrent use proceeding
therefore had been instituted. The concurrent use applicant would bear the
same service obligations as an opposer or petitioner.
The Board would, after an opposition or petition was filed, or a
concurrent use application was published for opposition and 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, and
setting via such notice 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. This would include a plaintiff
providing an e-mail address when filing by ESTTA or with its complaint, 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.
A plaintiff may not serve its complaint or concurrent use application on
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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.
Whenever a plaintiff has a service copy of a complaint or claim returned
as undeliverable, it would have to inform the Board within 10 days of the
return and, if known, any new address information for the defendant whose
service copy was returned to the plaintiff. Any 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), for any proceeding.
II. Adoption of Disclosure
In 1993, significant amendments to the Federal Rules of Civil Procedure
(federal rules) implemented a system requiring parties litigating in the
federal courts to disclose certain information and/or documents and things
without waiting for discovery requests. Individual district courts were
permitted to opt out of the mandatory disclosure regime.
In 2000, the federal rules were further amended, with elimination of the
option for individual courts to opt out of mandatory disclosure among the
most significant changes.
By notice issued January 15, 1994 (and published in the Official Gazette
at 1159 TMOG 14), the Board announced its decision not to follow many of
the 1993 changes to the federal rules, including the disclosure regime
established by Federal Rule 26. The Board subsequently amended the
Trademark Rules of Practice (trademark rules) in 1998. The original notice
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 it did not adopt a disclosure practice as an element of these
amendments, the Board noted that it would monitor recurring procedural
issues in Board cases and might propose and adopt additional changes to
practice in the future.
Empirical study has shown that disclosure 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 has conducted a thorough review of the empirical study and
available articles and reports on the subject of disclosure. The Office
has concluded from such review that use of disclosure in Board proceedings,
in a modified form of that used in the courts, would enhance the
possibility of parties settling a Board proceeding and doing so sooner. In
addition, disclosure will, if parties do not settle the case, 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 would serve as a substitute for a
certain amount of traditional discovery and a more efficient means for
exchange of information that otherwise would require the parties to serve
traditional discovery requests and responses thereto.
The Board's standard protective order would be applicable to all cases
and the Board notice of the commencement of a proceeding would so indicate
(and would note the availability of the standard protective order on the
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Office's Web site or in hard copy form, by request made to the Board). The
applicability of this standard protective order would not make all
submissions confidential, as parties would still have to utilize its
provisions as necessary. As under current practice, parties would be free
to agree to modify the standard protective order. Absent approval of a
stipulation to vary the terms of the standard protective order, approved by
the Board, the parties would have to abide by it.
The parties may agree to use e-mail to communicate with each other and
for forwarding of service copies.
1. The Schedule for Cases Under Disclosure
The Board's notice of the commencement of the proceeding (commonly
referred to as the institution order) will set forth disclosure-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 mailing date of institution
order.
(Institution date plus 40 days.)
Deadline for a discovery 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.)
Deadline for making initial disclosures - 30 days from the opening of
the discovery period.
(Institution date plus 100 days.)
Expert disclosure - 90 days prior to close of discovery (the mid-point
of the 180-day discovery period).
(Institution date plus 160 days.)
Discovery closes - 180 days from the opening date of the discovery
period.
(Institution date plus 250 days.)
Pre-Trial disclosures - 30 days after the close of the discovery period.
(Institution date plus 280 days.)
Plaintiff's 30-day testimony period - closes 90 days after the close of
discovery.
(Institution date plus 340 days.)
Defendant's 30-day testimony period - closes 60 days after the close of
plaintiff's testimony period.
(Institution date plus 400 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 generally opens after the discovery
conference, unless the parties defer their discovery conference to the
deadline date, in which case discovery would 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
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conference. Plus, the Board approach provides a longer period for making
disclosures than is provided under the federal rules. This will accommodate
the possibility of motions to suspend for settlement talks, which are quite
common in Board proceedings.
The length of the discovery period is the same as under current Board
practice, i.e., 180 days. Disclosures would be made no later than 30 days
into that period and the parties would have another 150 days for any
necessary additional discovery. The trial schedule, with its 60-day break
between discovery and trial and 30-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
defendant's default or the filing of various pleading motions under Federal
Rule 12 would effectively stay the parties' obligation to conference and
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, the extent of their initial disclosure
obligations.
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 filing of the answer, 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 when 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; but if the parties propose to meet in person,
participation by a Board professional would be by telephone, by
arrangement of the parties. A request for the participation of a Board
professional may only be made after answer is filed but in no event
later than 10 days prior to the deadline for conducting the discovery
conference. If neither party requests participation of a Board
professional in the discovery conference, the Board will assume that
the parties have met on their own, in person or by other means, no
later than the prescribed deadline. The parties would not have to file
a disclosure/discovery plan with the Board, following their discovery
conference, unless they were seeking leave to alter standard
deadlines/obligations; or unless they were so directed 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. The Board is likely to employ rather strict
time frames for filing such stipulations or motions and may routinely
employ phone conferences when any request to alter disclosure
obligations or deadlines is made by unilateral rather than consented
motion.
2. The Interplay of Disclosure and Discovery
A party may not seek discovery through traditional devices
until after it has made its disclosures. A party may not move for
summary judgment except on claim or issue preclusion grounds until
after it has made its disclosures.
The number of interrogatories will be limited to relect the fact
that core information (as discussed below) will be disclosed and
interrogatories will not be needed to obtain this information.
Initial disclosure should be much more limited in Board cases than it
is in civil actions. For a variety of reasons related to the unique
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nature of Board proceedings, the extent of initial disclosure can be
more limited than in the courts while still promoting the goals of
increased fairness and efficiency.
One reason is that the Board's jurisdiction is limited to determining
the right of a party to obtain, or retain, a registration, and 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 existence of other issues relatively unique to Board
proceedings, for example, that a high percentage of applications
involved in oppositions are not based on use of the 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. Sec. 1052(d), the Board
focuses only on goods or services recited in identifications, and on a
mark as registered or applied-for, irrespective of many actual
marketplace issues.
Federal Rule 26(a)(1) requires initial disclosure as a means of
obviating the need to use traditional discovery to obtain "core
information" about a party's claims or defenses. The federal rule is
written very generally to account for the wide variety of types of
cases tried in the federal district courts; even under the federal
rule, however, a party is not obligated under initial disclosure to
disclose every fact, document or thing that is considered
discoverable about its claim or defense, but merely the
"information that the disclosing party may use to support its claims
or defenses." Further, disclosure focuses on exchange of "core
information" and does not substitute for comprehensive discovery.
In inter partes proceedings before the Board, parties will generally be
found to have met their initial disclosure obligations if they provide
information about the following, as applicable in any particular case:
Origin of any mark on which the party relies, including adoption or
creation of the mark and original plans for use of the mark;
Dates of use of any marks, registered or not, on which the party's
claims or defenses rely;
The extent of past or current use, if any, or plans for future use of
any marks on which claims or defenses rely, including use by the party
or by licensees;
Evidence of actual confusion possessed by a party in regard to the
involved marks;
The party's awareness of third-party use or registration of marks that
are the same or very similar for goods or services the same as or
closely related to the involved marks and goods or services;
The extent of use by the party, if any, in a non-trademark manner of
words or designs asserted by that party to be non-distinctive;
A party's awareness of use of involved words or designs by third
parties when the party is asserting that such words or designs are
non-distinctive;
Classes of customers for the party's involved goods or services,
including information on the technical expertise or knowledge employed
by customers in making purchasing decisions;
Channels of trade for the party's involved goods or services;
Methods of marketing and promoting the party's involved goods or
services;
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Surveys or market research conducted by the party in regard to any
involved mark on which it will rely;
Information regarding other Board proceedings, litigation, or
controversies in which the party has been involved, which were related
to the involved marks or, if applicable, assertedly non-distinctive
matter;
The names of individual officials or employees of a party, and contact
information therefor, who are known to have the most extensive knowledge
of subjects on which disclosure is made; and
General descriptions of and the probable locations of non-privileged
documents and things maintained by the party or its attorneys related
to the subjects on which disclosure is made.
The Board recognizes that the language used herein to describe
subjects for which there must be initial disclosure, unless
inapplicable in a particular case, may be subject to dispute. Parties
are expected, however, to read the descriptions in light of the
intended goals for disclosure and in a reasonable manner, and without
engaging in artificial attempts to limit disclosure through arcane
interpretation.
The Board also recognizes that the specificity of information released
by a party to comply with its disclosure obligations may be subject to
dispute. This is, however, one of the issues that must be anticipated
and discussed by the parties during their discovery conference. In
addition, the parties are free to discuss additional subjects for which
disclosure should be made, or subjects which they do not believe should
require disclosure because they are insignificant or not in genuine
dispute.
Finally, the Board recognizes that a disclosure obligation may be met,
in regard to some subjects, by providing summary information, round
numbers, or representative samples. To emphasize, initial disclosure is
not intended to substitute for all discovery, but rather, to prompt
routine disclosure of core information 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 disclosures 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 also may be used to support or contest
a motion for summary judgment but, at trial, they may be introduced by
notice of reliance only if otherwise appropriate for such filing. In
essence, initial disclosures will be treated like responses to written
discovery.
3. Expert Disclosure and Pre-trial Disclosure
A party's plan to use experts must be disclosed no later than
90 days prior to the close of discovery, so that any adverse party will
have an opportunity to take necessary discovery. However, if the expert
is retained early and an adverse party has inquired about experts
through discovery, the party may not delay revealing the expert until
the deadline for disclosure of experts. Also, the Board recognizes that
there may be cases in which a party retains an expert after the
deadline for expert disclosure. In such cases, disclosure must be made
promptly when the expert is retained.
Pretrial disclosure will require disclosure of the identity of
witnesses that a party expects to present, or may present if the need
arises. For each witness, general summaries or descriptions of the
subjects on which the witness will testify and the documents or things
to be introduced during the deposition must be disclosed. These
disclosures must be made 30 days prior to the opening of trial. A party
may object to improper or inadequate pre-trial disclosures and may move
to strike the testimony of a witness for lack of proper pre-trial
disclosure.
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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, 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, or printed publications
in general circulation, or government documents generally available to
all parties.
III. Removal of option to make submissions on CD-ROM
The Office proposes to remove from Trademark Rule 2.126, 37
C.F.R. Sec. 2.126, the option to file submissions in CD-ROM form. CD-ROMs
present technical problems for the ESTTA/TTABIS systems and have rarely
been utilized by parties.
IV. Change to Rule on Briefing of Motions
The Office proposes to amend Trademark Rule 2.127, 37 C.F.R. Sec.
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, whichever a party may choose to employ, all count against the
limit of 25 pages for a brief in support of a motion or in response to
a motion and the limit of 10 pages for a reply brief.
Discussion of Specific Rules
The Office proposes to make the following amendments:
[2.99(b) to (d)]
The Office proposes to revise Sec. 2.99(b), (c) and (d)(1) by shifting
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)]
The Office proposes to revise Sec. 2.101(a) to specify that proof of
service on applicant at the correspondence address of record must be
included with the filing of the notice of opposition.
The Office proposes to revise Sec. 2.101(b) to define the phrase
"correspondence address of record"; and to specify the steps
opposer should take if opposer believes that the correspondence address
of record is not accurate, or if the service copy of the notice of
opposition is returned as undeliverable to opposer.
The Office proposes to revise Sec. 2.101(d)(4) to add to the
requirements for receiving a filing date for the notice of opposition
the inclusion of proof of service on applicant at the correspondence
address of record.
[2.105(a) and 2.105(c)]
The Office proposes to revise Sec. 2.105(a) to cross-reference rules
concerning proper form and proper service; 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.
The Office proposes to revise Sec. 2.105(c) introductory text to shift
to plaintiffs the responsibility for service of the complaint directly on
defendants, rather than through the Board.
[2.111(a) to (c)]
The Office proposes to revise Sec. 2.111(a) to specify that proof of
service on the owner of record for the registration, or the owner's
domestic representative of record, at the correspondence address of
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record must be included with the filing of the petition to cancel,
along with the required fee.
The Office proposes to revise Sec. 2.111(b) to define the phrase
"correspondence address of record"; and to specify the steps
petitioner should take if petitioner believes that the correspondence
address of record is not accurate, or if the service copy of the
petition to cancel is returned as undeliverable to petitioner.
The Office proposes to revise Sec. 2.111(c)(4) to add to the
requirements for receiving a filing date for the petition to cancel
the inclusion of proof of service on the owner of record or on the owner's
domestic representative of record, at the correspondence address of record.
[2.113(a) and (c)]
The Office proposes to revise Sec. 2.113(a) to clarify that the answer
must be filed by the respondent; 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.
The Office proposes to revise Sec. 2.113(c) to shift to plaintiffs the
responsibility for service of the complaint directly on defendants,
rather than through the Board.
[2.113(e)] [remove]
The Office proposes to remove Sec. 2.113(e) to conform the rule to the
existing practice whereby the Office no longer advises petitioners of
defective petitions to allow for correction of defects.
[2.116(g)] [add]
The Office proposes to add new paragraph (g) to Sec. 2.116. Proposed
Sec. 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 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]
The Office proposes to revise Sec. 2.118 to extend its coverage to
applicants as well as registrants, so as to allow for service of
additional notice of a proceeding, by publication in the Official
Gazette, when a notice mailed to an applicant is returned as
undeliverable.
[2.119(a) and (b)]
The Office proposes to revise Sec. 2.119(a) by changing "Patent and
Trademark Office" to "United States Patent and Trademark Office;"
by making the singular "notice of appeal" the plural "notices of
appeal;" and by striking out the list of filings that are exceptions
to the general requirement that a party to a Board proceeding serve its
filings on its adversary. The last of these changes will accommodate
the Board's shift to service by plaintiffs on defendants, rather than
through the Board, at the commencement of a proceeding.
The Office proposes to revise Sec. 2.119(b) by adding subsection (6),
which will allow parties to meet their service obligations by utilizing
fax or e-mail, upon agreement of the parties.
[2.120(a), (d) through (j)]
The Office proposes to revise Sec. 2.120(a) to include detailed
provisions regarding the requirements for a discovery conference and
for initial and expert disclosures in lieu of discovery.
The Office proposes to revise Sec. 2.120(d)(1) to limit the number of
interrogatories a party may serve to 25; and to clarify that a motion
or stipulation of the parties to allow interrogatories in excess of the
limit requires approval of the Board.
The Office proposes to revise Sec. 2.120(e) so that provisions regarding
a motion for an order to compel will apply to discovery and disclosures
in lieu of discovery.
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The Office proposes to revise Sec. 2.120(f) so that provisions regarding
a motion for a protective order will apply to discovery and disclosures
in lieu of discovery.
The Office proposes to revise Sec. 2.120(g) so that provisions regarding
a motion for sanctions may apply to a party's non-participation in
the discovery conference, to a party's failure to comply with its
disclosure obligations, and to its failure to comply with its discovery
obligations; and to specify a deadline for filing a motion for
sanctions for failure of a party to participate in the discovery
conference.
The Office proposes to revise Sec. 2.120(h)(2) to specify that the
filing of 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.
The Office proposes to revise Sec. 2.120(i) to clarify the language in
paragraph (i)(1), to conform titles used in paragraph (i)(2) to
existing titles, 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.
The Office proposes to revise Sec. 2.120(j)(3) and (5) through (8) to
provide that 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 a past
practice of the Board whereby it would return to parties filings
related to discovery that should not have been filed with the Board.
[2.121(a) and (d)]
The Office proposes to revise Sec. 2.121(a) to provide for a deadline
for pre-trial disclosures and for testimony periods.
The Office proposes to revise Sec. 2.121(d) to account for the resetting
of the pre-trial disclosure deadline and testimony periods.
[2.121(e)] [add]
The Office proposes to add Sec. 2.121(e) to explain what is required of
a party making pre-trial disclosures.
[2.122(d)]
The Office proposes to revise Sec. 2.122(d)(1) to conform to existing
practice by removing the requirement for an opposer or petitioner to
file two copies when making a pleaded registration of record with a
notice of opposition or petition for cancellation.
[2.123(e)]
The Office proposes to revise Sec. 2.123(e)(3) to provide that a party
may object to improper or inadequate pre-trial disclosures and may move
to strike the testimony of a witness for lack of proper pre-trial
disclosure.
[2.126(a)]
The Office proposes to revise Sec. 2.126(a)(6) to reflect the proposed
removal of Sec. 2.126(b).
[2.126(b)] [remove]
The Office proposes to remove Sec. 2.126(b), which allows a party to
make submissions on CD-ROM.
[2.127(a), (c) and (e)]
The Office proposes to revise Sec. 2.127(a) to clarify the provisions
relating to briefing of motions and to conform them to existing
practice.
The Office proposes to revise Sec. 2.127(c) to update titles and to
correct a typographical error.
The Office proposes to revise Sec. 2.127(e) to provide that a party may
not file a motion for summary judgment before it has made its initial
disclosures; and to provide that a party may submit disclosures and
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disclosed documents when briefing a motion for summary judgment.
[2.129(a)]
The Office proposes to revise Sec. 2.129(a) to update titles.
[2.133(a) and (b)]
The Office proposes to revise Secs. 2.133(a) and (b) to conform to
current practices related to amendment of an application or
registration involved in an inter partes proceeding.
[2.142(e)]
The Office proposes to revise Sec. 2.142(e)(1) to update titles.
[2.173(a)]
The Office proposes to revise Sec. 2.173(a) to conform to current
practices related to amendment of a registration involved in an inter
partes proceeding.
[2.176]
The Office proposes to revise Sec. 2.176 to conform to current practices
related to amendment of a registration involved in an inter partes
proceeding.
Rulemaking Requirements
I. Executive Order 13132:
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
II. Executive Order 12866:
This rulemaking has been determined not to be significant for
purposes of Executive Order 12866 (Sept. 30. 1993).
III. Regulatory Flexibility Act:
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 proposed rules.
The changes in this proposed 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 are not required for the changes in this proposed rule, a
Regulatory Flexibility Act analysis is also not required for the
changes proposed in this rule. See 5 U.S.C. 603.
Nevertheless, the Office is publishing this notice of proposed
rulemaking 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 exchange core information
supporting their claims or defenses and identify expert witnesses to be
used during Board proceedings, as part of the discovery phase, and will
disclose the identity of witnesses the party expects to call during a
pre-trial phase.
These proposed 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
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turn, serves the papers on the defendants. Changing the recipient of
the papers will not have a 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 proposed 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.
IV. Paperwork Reduction Act:
The proposed amendments to the Trademark Trial and Appeal Board
Rules do 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 does not apply to these proposed
amendments.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority contained
in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office proposes to
amend part 2 of title 37 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 Sec. 2.99(b), (c) and (d)(1) to read as follows:
Sec. 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 Sec. 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 (defendant). 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) The applicant for concurrent use registration will be
required to serve copies of its application, specimens and drawing on
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each applicant, registrant or user specified as a concurrent user in
the application for registration, within ten days from the date of the
Board's notification.
*****
3. Revise Sec. 2.101(a), (b) and (d)(4) to read as follows:
Sec. 2.101 Filing an opposition.
(a) An opposition proceeding is commenced by filing in the
Office a timely opposition, with proof of service on the applicant at
the correspondence address of record, and the required fee.
(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
for the applicant of record or, if there is no attorney, on the
applicant or on the applicant's domestic representative, if one has
been appointed, utilizing the correspondence address of record. The
opposer must include with the opposition proof of service pursuant to
Sec. 2.119 at the correspondence address of record. If the opposer
believes that the applicant of record or correspondence address of
record is not accurate or current, the opposer should serve an
additional copy of the opposition and exhibits on any party, or the
party's attorney or domestic representative, that the opposer has
reason to believe may be the correct applicant, or its successor-in-
interest, and must also include with its opposition proof of such
service. If any service copy of the opposition is returned to the
opposer as undeliverable, the opposer should notify the Board within
ten days. The opposition need not be verified, but must be signed by
the opposer or the opposer's attorney, as specified in Sec. 10.1(c) of
this chapter, or other authorized representative, as specified in Sec.
10.14(b) of this chapter. Electronic signatures pursuant to Sec.
2.192(c)(1(iii) are required for oppositions filed 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 opposition, with proof of service on the applicant of
record, at the correspondence address of record, and the required fee,
unless filed in accordance with Sec. 2.198.
4. Revise Sec. 2.105(a) and the introductory text of paragraph (c)
to read as follows:
Sec. 2.105 Notification to parties of opposition proceeding(s).
(a) When an opposition in proper form (see Secs. 2.101 and
2.104), with proof of service in accordance with Sec. 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.
*****
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(c) The Board shall forward a copy of the notification to
applicant, as follows:
*****
5. Revise Sec. 2.111(a), (b) and (c)(4) to read as follows:
Sec. 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.
(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, at the
correspondence address of record. The petitioner must include with the
petition for cancellation proof of service, pursuant to Sec. 2.119, on
the owner of record, or on the owner's domestic representative of
record, at the correspondence address of record. If the petitioner
believes that the owner of record, the domestic representative of
record, or the correspondence address of record is not accurate or
current, the petitioner should serve an additional copy of the petition
and exhibits on any party, or the representative therefor, that the
petitioner has reason to believe may be the correct owner or
successor-in-interest and must also include with its petition proof of
such service. If any service copy of the petition for cancellation is
returned to the petitioner as undeliverable, the petitioner should
notify the Board within ten days.
(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 of record, at the correspondence address of record, and
with the required fee, unless filed in accordance with Sec. 2.198.
6. Remove Sec. 2.113(e) and revise Sec. 2.113(a) and (c) to read as
follows:
Sec. 2.113 Notification of cancellation proceeding.
(a) When a petition for cancellation has been filed in proper
form (see Secs. 2.111 and 2.112), 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 by the respondent.
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 Sec. 2.118). The respondent shall be the party shown by
the records of the Office to be the current owner of the
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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 Sec. 2.116(g) to read as follows:
Sec. 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. 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, 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 Sec. 2.118 to read as follows:
Sec. 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 Sec. 2.119(a) and add paragraph (b)(6) to read as follows:
Sec. 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 paragraphs (a), (d)(1), (e), (f), (g), (h)(2), (i),
(j)(3) and (j)(5) through (8) to read as follows:
Sec. 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
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opposition, cancellation, interference and concurrent use registration
proceedings except as otherwise provided in this section. The
provisions of the Federal Rules of Civil Procedure relating to
automatic disclosure, scheduling conferences, conferences to discuss
settlement and to develop a discovery plan, and transmission to the
court of a written report outlining the discovery plan, are applicable
to Board proceedings in modified form, as noted in these rules and
further explained in documents posted on the Web site of the Office.
The Trademark Trial and Appeal 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. 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 10 days prior to the deadline
for the conference. The discovery period will be set for a period of
180 days. Initial disclosures shall be made no later than 30 days after
the opening of the discovery period. Expert disclosure shall occur no
later than 90 days prior to the close of the discovery period or, if
the expert is retained after the deadline for disclosure of experts,
promptly upon retention of the 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.
(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 upon 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 30 days from the date
of service of such discovery requests. The time to respond may be
extended upon stipulation of the parties, or upon motion granted by the
Board, or by order of the Board. The resetting of a party's time to
respond to an outstanding request for discovery will not result in the
automatic rescheduling of the discovery and/or testimony periods; such
dates will be rescheduled only upon stipulation of the parties approved
by the Board, or upon motion granted by the Board, or by order of the
Board.
*****
(d) Interrogatories; request for production.
(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 twenty-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
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party upon which interrogatories have been served believes that the
number of interrogatories served 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
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
before the Trademark Trial and Appeal Board for an order 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 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 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 disclosure or
discovery, the case will be suspended by the Trademark Trial and Appeal
Board with respect to all matters not germane to the motion, and no
party should file any paper which is not germane to the motion, except
as otherwise specified in the Board's suspension order. The filing of a
motion to compel 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 disclosures 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 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.
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(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 any of the orders 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 any expenses to any party. The Board may
impose against a party any of the sanctions provided by this subsection
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 to be imposed 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 disclosures, 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 made by that party for an
admission, the case will be suspended by the Trademark Trial and Appeal
Board with respect to all matters not germane to the motion, and no
party should file any paper which is not germane to the motion, except
as otherwise specified in the Board's suspension order. 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 pre-trial 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
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 pre-trial conference.
(j)***
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(3)(i) Disclosures but not disclosed documents, a discovery
deposition, an answer to an interrogatory, or an admission to a request
for admission, 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 written disclosure, 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), 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
which 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 which 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 Sec. 2.122(e).
*****
(5) Disclosures, an answer to an interrogatory, or an admission
to a request for admission, may be submitted and made part of the
record by only the receiving or inquiring party except that, if fewer
than all of the 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 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 disclosures or discovery responses listed in the disclosing
or responding party's notice, failing which the Board, in its
discretion, may refuse to consider the additional disclosures or
responses.
(6) Paragraph (j) of this section will not be interpreted to
preclude the reading or the use of 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 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) Disclosures or disclosed documents, requests for discovery,
responses thereto, and materials or depositions obtained through the
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:
Sec. 2.121 Assignment of times for taking testimony.
(a) The Trademark Trial and Appeal Board will issue a trial
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order setting a deadline for required pre-trial disclosures and
assigning to each party the 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, by order of the
Board. The deadline for pre-trial 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 the pre-trial disclosure deadline and testimony
periods is denied, the deadline and testimony periods may remain as
set. The resetting of the closing date for discovery will result in the
rescheduling of the pre-trial disclosure deadline and testimony periods
without action by any party.
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(d) When parties stipulate to the rescheduling of the deadline
for pre-trial disclosures and testimony periods or to the rescheduling
of the closing date for discovery and the rescheduling of the deadline
for pre-trial 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.
Each party must disclose the name and address of each witness from whom
it intends to take testimony, or may take testimony if the need arises,
general information about the witness, a summary of subjects on which
the witness is expected to testify, and a general summary of the types
of documents and things which may be introduced as exhibits during the
testimony of the witness. Pre-trial disclosure of a witness under this
subsection does not substitute for issuance of a proper notice of
examination under Sec. 2.123(c) or Sec. 2.124(b). If a party does not plan
to take testimony from any witnesses, it must so state in its pre-trial
disclosure. When a party fails to make required pre-trial disclosures,
any adverse party or parties may have remedy by way of a motion to the
Trademark Trial and Appeal Board to delay or reset testimony periods.
12. Revise Sec. 2.122(d)(1) to read as follows:
Sec. 2.122 Matters in evidence.
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(d) Registrations.
(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
Patent and Trademark Office showing both the current status of and
current title to the registration. For the cost of a copy of a
registration showing status and title, see Sec. 2.6(b)(4).
*****
13. Revise Sec. 2.123(e)(3) to read as follows:
Sec. 2.123 Trial testimony in inter partes cases.
*****
(e)***
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(3) Every adverse party shall have full opportunity to cross-examine
each witness. If pre-trial disclosures or the notice of
examination of witnesses which is 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,
if he wishes 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 pre-trial disclosure or 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.
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14. Remove Sec. 2.126(b) and redesignate paragraphs (c) and (d) as
paragraphs (b) and (c), respectively, and revise paragraph (a)(6) to
read as follows:
Sec. 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 Sec. 2.127(a), (c), and (e) to read as follows:
Sec. 2.127 Motions.
(a) Every motion must be submitted in written form and must
meet the requirements prescribed in Sec. 2.126. It shall contain a full
statement of the grounds, and shall embody or be accompanied by a
brief. Except as provided in paragraph (e)(1) of this section, a brief
in response to a motion shall be filed within fifteen days from the
date of service of the motion unless another time is specified by the
Trademark Trial and Appeal Board, or the time is extended by
stipulation of the parties approved by the Board, or upon motion
granted by the Board, or upon order of the Board. If a motion for an
extension is denied, the time for responding to the motion 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. No further papers in support of or in opposition to a
motion will be considered by the Board. 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.
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(c) Interlocutory motions, requests, and other matters not
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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.
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(e)(1) A party may not file a motion for summary judgment until
the party has made its initial disclosures. 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 30 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 30
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 15 days from the date of service of the
brief in response to the motion. The time for filing a reply brief will
not be extended. No further papers in support of or in opposition to a
motion for summary judgment will be considered by the Board.
(2) For purposes of summary judgment only, disclosures or
disclosed documents, a discovery deposition, or an answer to an
interrogatory, or a document or thing produced in response to a request
for production, or an admission to a request for admission, will be
considered by the Trademark Trial and Appeal Board if any party files,
with the party's brief on the summary judgment motion, the written
disclosures or disclosed documents, 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 production and the documents or things produced in
response thereto, 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).
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16. Revise Sec. 2.129(a) to read as follows:
Sec. 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.
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17. Revise Sec. 2.133 (a) and (b) to read as follows:
Sec. 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 approved 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 Trademark Trial and Appeal 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 Trademark Trial and Appeal Board,
failing which judgment will be entered against the party.
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18. Revise Sec. 2.142(e)(1) to read as follows:
Sec. 2.142 Time and manner of ex parte appeals.
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(e)(1) If the appellant desires an oral hearing, a request
therefor 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.
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19. Revise Sec. 2.173(a) to read as follows:
Sec. 2.173 Amendment of registration
(a) A registrant may apply to amend a registration or to
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. This request must be signed by the registrant and
verified or supported by a declaration under Sec. 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 Sec. 2.176 to read as follows:
Sec. 2.176 Consideration of above matters.
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The matters in Secs. 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 Sec. 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 Sec. 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.
January 4, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1303 TMOG 58]