(199) DEPARTMENT OF COMMERCE
Patent and Trademark Office
Effect of December 1, 1993 Amendments
to the Federal Rules of Civil Procedures on
Trademark Trial and Appeal Board
Inter Partes Proceedings
Trademark Rule 2.116(a) provides that, except as
otherwise provided, and wherever applicable and appropriate, procedure and
practice in Trademark Trial and Appeal Board (Board) inter partes
proceedings shall be governed by the Federal Rules of Civil Procedures.
Trademark Rule 2.120(a) provides, in part, that the provisions of the
Federal Rules of Civil Procedure relating to discovery shall apply in
opposition, cancellation, interference, and concurrent use registration
proceedings except as otherwise provided in Trademark Rule 2.120; and that
the opening of discovery is governed by the Federal Rules of Civil
Procedure. Thus, where the Board has its own rule concerning a particular
matter of practice or procedure, that rule governs; if there is no Board
rule concerning the matter, the Federal Rules of Civil Procedure apply,
where applicable and appropriate.
On December 1, 1993, certain of the rules in the Federal Rules of Civil
Procedures were amended, and one new rule was added. Specifically, Rules
1, 4, 5, 11, 12, 15, 16, 26, 28, 29, 30, 31, 32, 33, 34, 36, 37, 38, 50,
52, 53, 54, 58, 71A, 72, 73, 74, 75, and 76 were amended, and new Rule 4.1
was added. Included in the amendments are changes in the discovery rules
to require that the parties to a civil action: (1) make a series of
automatic disclosures, during the pretrial stages of the proceedings, of
certain evidence; (2) file the disclosures with the court; (3) meet, early
in the proceeding, to discuss, inter alia, the automatic disclosure and to
develop a plan for discovery; and, (4) transmit to the court a written
report outlining the discovery plan. The timing of some of these matters
is tied to the timing of a scheduling conference to be held, or a
scheduling order to be issued, by the court. The timing and sequence of
other of the matters depends upon the direction of the court. Further,
parties are prohibited from seeking any of the traditional forms of
discovery until after they have met and developed their discovery plan.
The Patent and Trademark Office (Office) believes that the application
of the cited provisions in inter partes proceedings before the Board would
increase the complexity and cost of the proceeedings and would be unduly
burdensome both to the Board and the parties. For these reasons, the
Office is now of the opinion that these provisions would have a
detrimental effect on, and are not appropriate for, Board proceedings.
Moreover, the Office's Public Advisory Committee for Trademark Affairs has
recommended that incorporation of the amendments in Board practice be
deferred until the Office can evaluate the effects of the amendments on
civil actions. On the other hand, some of the provisions added by the
amendments are not objectionable, and others so clearly do not apply in,
and/or are not appropriate for, Board proceedings that they need not be
mentioned.
Accordingly, application of Rule 2.120(a) is hereby waived, in
pertinent part, to the extent that the following provisions of the Federal
Rules of Civil Procedure, as amended, which otherwise arguably would apply
in Board proceedings, and which would, in the opinion of the Office, have
a detrimental effect on those proceedings, shall not be applied therein
unless and until further notice is given:
1. Rule 16(b) [requirement that court issue a scheduling order, after
consulting with parties by scheduling conference, telephone, mail, or
other suitable means]
2. Rules 26(a)(1)-26(a)(4) [requirements for series of automatic
disclosures of evidence]
3. Rule 26(b)(4) [requirements for taking discovery from a person
identified, in automatic disclosure, as an expert whose opinions may be
presented at trial]
4. Rule 26(d), first sentence [prohibition against the taking of discovery
before the parties have met to discuss, inter alia, the automatic
disclosures and to develop a plan for discovery]
5. Rule 26(e)(1) [requirement for supplementation of automatic
disclosures]
6. Rule 26(f) [requirement that the parties meet, early in the proceeding,
to discuss, inter alia, the automatic disclosure and to develop a plan for
discovery]
7. Rule 26(g)(1) [signature requirements for automatic disclosures]
8.Rule 30(a)(2)(C) [requirement that a party obtain leave of court or
written stipulation to take a deposition prior to the Rule 26(f) meeting
of the parties]
9. Rule 33(a), last sentence [requirement that a party obtain leave of
court or written stipulation to serve interrogatories prior to the Rule
26(f) meeting of the parties]
10. Rule 34(b), last sentence of first paragraph [requirement that a party
obtain leave of court or written stipulation to serve request for
production of documents and things prior to the Rule 26(f) meeting of the
parties]
11. Rule 36(a), last sentence of first paragraph [requirement that a party
obtain leave of court or written stipulation to serve request for
admission prior to the Rule 26(f) meeting of the parties]
12. Rule 37(a)(2)(A) [provision of motion to compel disclosure and for
sanctions for failure to make automatic disclosure]
13. Rule 37(c)(1) [description of sanctions which may be imposed for
failure to make, or supplement, automatic disclosure]
14. Rule 37(g) [provision of sanctions for failure to participate in good
faith in the framing of a discovery plan]
Discovery in Board inter partes proceedings will continue to open as it
did prior to December 1, 1993 amendments to the Federal Rules of Civil
Procedure, that is, as provided in those rules as they existed on November
30, 1993. Thus, interrogatories, requests for production of documents and
things, and requests for admission may be served upon the plaintiff after
the proceeding commences (i.e., after the notice of opposition or petition
for cancellation is filed, and after the mailing by the Board of the
notice of institution in an interference or concurrent use proceeding),
and upon the defendant with or after service of the complaint by the
Board. Discovery depositions generally may be taken by any party after
commencement of the proceeding. Board's permission to take a discovery
deposition must be obtained in certain situations, including a situation
in which the plaintiff seeks to take a deposition prior to the expiration
of 30 days after service of the complaint by the Board upon any defendant,
except where a defendant has served a notice of taking deposition or
otherwise sought discovery or where the notice of deposition: (1) states
that the proposed deponent is about to go out of the United States and
will be unavailable for examination unless the person's deposition is
taken before expiration of the 30-day period, and, (2) sets forth facts to
support the statement.
Similarly, the practice embodied in Rules 33(a), 34(b), and 36(a) of
the Federal Rules of Civil Procedure, as they read on November 30, 1993,
that a defendant may serve responses to interrogatories, requests for
production of documents and things, and requests for admission either
within 30 days after service of a discovery request [35 days if service of
the request for discovery is made by first-class mail, "Express Mail," or
overnight courier--Trademark Rule 2.119(c)], or within 45 days after
service of the complaint upon it by the Board, whichever is later, will
continue to be followed in Board proceedings.
The Patent and Trademark Office will, in due course, publish a notice
of proposed rule making to amend, as may be necessary, the trademark rules
governing practice and procedure in inter partes proceedings before the
Board.
Jan. 15, 1994 ROBERT M. ANDERSON
Acting Assistant Commissioner
for Trademarks
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