United States: Proposed Changes to TTAB Rules Mirror FRCP

The United States Patent & Trademark Office (USPTO) has proposed a series of amendments to the rules of practice in inter partes proceedings before the Trademark Trial and Appeal Board (TTAB).¹ The proposed changes are based on a modified version of the Federal Rules of Civil Procedure and include changes in how the proceeding is commenced, required initial disclosures, changes to the timing of discovery, and a mandatory protective order. According to the USPTO, the changes are designed to increase efficiency, promote procedural fairness, ensure that cases are decided on the merits of a fully developed record, promote earlier settlement, and reflect current practice.

Under the proposed changes, a plaintiff, including a concurrent use applicant, will be able to serve her complaint directly on the record owner and any other party she knows to have an ownership interest in the mark at the same time the complaint is filed with the TTAB.² This proposed change differs from the current practice whereby a plaintiff files a notice of complaint (or claim of right to a concurrent use registration) along with copies to be served on the defendant by the TTAB. The current practice often delays institution of the proceeding, particularly if the correct address of the defendant is unknown and multiple communications are required between the TTAB and the plaintiff in order to effect service. By allowing the plaintiff to serve the defendant directly, the proposed change promotes procedural efficiency. The plaintiff will be required to inform the TTAB within 10 days of any service copies returned as undeliverable.

If the parties are in communication prior to the filing of the complaint, they can agree to accept service via e-mail or facsimile. If the parties have agreed to accept electronic service, the TTAB may serve the Notice of Institution by e-mail with the option to post a notice by publication in the Official Gazette for undelivered notifications. This procedure was previously only available in cancellation proceedings.

The USPTO has proposed a modified version of the Federal Rules of Civil Procedure to govern discovery in inter partes proceedings. Specifically, parties will be required to exchange initial disclosures and hold a discovery conference at the beginning of the discovery period.³ The deadline for making initial disclosures is similar to Rule 26(a)(1) except that the deadline for responding runs from the deadline for holding the initial discovery conference rather than the date of the actual conference.

Similar to Rule 26(a)(1), each party will be required to disclose "core information" that will be used to support its claims and defenses. The categories of core information proposed by the USPTO include (1) origin of any marks; (2) dates of use; (3) extent of past or current use and any plans for future uses; (4) evidence of actual confusion; (5) third-party uses or registrations for similar marks; (6) extent of use in a non-trademark manner of words or designs asserted to be non-distinctive; (7) third-party use of involved words or designs when the party is asserting that such words or designs are non-distinctive; (8) type and sophistication of customers; (9) channels of trade; (10) marketing materials; (11) surveys or market research; (12) other TTAB proceedings or litigation regarding the involved marks; (13) contact information for persons with knowledge of the above subjects; and (14) general descriptions and probable locations of non-privileged documents and things related to the above subjects.⁴

The initial disclosures will serve as a substitute for a substantial amount of traditional discovery that previously required specific discovery requests. Accordingly, the USPTO has proposed reducing the number of interrogatories from the current 75 to 25 per party.⁵

Under the current system, discovery opens 20 days after the Institution Notice and closes after 180 days. There is no discovery conference akin to a Rule 26(f) conference to open discovery and no specific timing for expert disclosures. In contrast, the proposed changes call for a discovery conference within 30 days of the answer deadline. Similar to Rule 26, discovery will open after the initial discovery conference. Discovery will still close after 180 days, but parties are required to identify any experts 90 days prior to the close of discovery to allow expert discovery. A summary of the proposed timeline is as follows:⁶

Under the proposed changes, the TTAB’s standard protective order will be mandatory in all inter partes proceedings unless the parties agree to modify it and the TTAB approves.⁷ Under the current system, the parties are not required to use a protective order.

The proposed changes also make minor modifications and corrections to the existing rules to reflect current practice.⁸ One change removes the option to file submissions with the TTAB on CD-ROM. (Rule 2.126) Another proposed change clarifies the rules on page limits for briefs. Specifically, the table of contents, table of authorities, description of record, statement of the issues, recitation of the facts, argument, and summary all count against brief page limits (25 for supporting or opposing brief; 10 pages for reply brief). (Rule 2.127)

The USPTO solicited comments on the proposed changes through March 20, 2006.

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