United States: USPTO Proposes Amendments To Streamline TTAB Procedure

On Monday, April 4, 2016, the United States Patent and Trademark Office ("USPTO") issued proposed amendments to the Trademark Rules of Practice aimed at streamlining proceedings before the Trademark Trial and Appeal Board ("TTAB") that  include significant changes to discovery protocol, electronic filing requirements, and the presentation of trial evidence.

The proposed amendments are intended to reduce the burden on parties litigating before the TTAB, increase efficiency, conform the rules to current practice and changes to the Federal Rules of Civil Procedure, and adapt to technological changes that have influenced litigation practice. Key changes include mandated electronic filing, the ability to submit trial testimony by declaration or affidavit (subject to cross examination), and new limitations and timeframes for discovery intended to promote efficient and fair resolution of disputes before the Board.

The proposed amendments are summarized below.

E-Filing

Mandatory Electronic Filing. All filings must be made through the ESTTA, the Board's electronic case filing system. Paper filings will be permitted in rare circumstances where filing through ESTTA is not possible, and parties will be required to submit proof that electronic filing was not possible due to technical problems or extraordinary circumstances.

Email Notice. The Board will send all notices, orders, and decisions via email, making it all the more important that applicants and their attorneys maintain updated correspondence information.

Service

Board Service of Notices of Opposition and Petitions for Cancellation. Rather than require each plaintiff to serve the complaint on the defendant, the Board will have responsibility for serving a Notice of Opposition or Petition for Cancellation on defendants. In keeping with the shift toward complete use of electronic communication, the Board will serve the complaint by linking to the notice of institution in TTABVUE, the online docket for TTAB proceedings.

Required Email Service. The proposed rules require that all submissions filed with the Board and any other papers be served by email, unless service cannot be made due to technical problems or extraordinary circumstances.

Expanded Electronic Service Options. In addition to electronic service, which became permitted under the 2007 rules, the Board will permit parties to stipulate to accommodate other methods of communication that may promote convenience and expediency, such as by use of a "file hosting service that provides cloud storage" or delivery of a USB drive, etc.

End of the Mailbox Rule. In light of the transition to electronic service, the additional five days previously added to the prescribed period for a response—intended to account for mail delay—will no longer be in effect. Thus, the response period for a motion would be 20 days, with the exception of summary judgment motions, which would have a response period of 30 days from service. No additional time will be permitted for service of discovery responses.

Discovery

Adoption of FRCP Proportionality Requirements. The proposed rules adopt amendments to the Federal Rules of Civil Procedure by codifying the concept of "proportionality" in discovery.

Ability to Stipulate to Discovery Limitations. Parties may stipulate to limit discovery by shortening the discovery period, limiting requests, and reciprocal disclosures in lieu of discovery, or "eliminating discovery altogether."

Recognition of ESI. Electronically discoverable information ("ESI") will be explicitly referenced in the rules, in recognition of the fact that many relevant documents are now kept in electronic form and to clarify that the discovery rules apply equally to ESI.

Limitations on Discovery Requests. The number of requests for production of documents and requests for admission will be limited to 75 each, the same as the current limitation on interrogatories. There will no longer be an option to request leave to serve additional interrogatories.

Streamlined Authentication Requests. In an effort to curtail discovery abuse, the proposed rules allow for each party that has received produced documents to serve one comprehensive request for admission on the producing party, whereby the producing party would authenticate all produced documents or specify which documents cannot be authenticated.

Fair Play for Foreign Parties. A party must inform every adverse party whenever a foreign party has or will have an officer, director, managing agent, or other person who consents to testify on its behalf present in the United States during the relevant discovery period.

Time to Serve Discovery Requests. Discovery must be served early enough in the discovery period that responses will be provided. All discovery, including production of documents, must be completed by the close of discovery.

Timing of Motions to Compel. Previously, the deadline for motions to compel was simply before the first trial period commenced. The amendments will require motions to compel discovery or to determine the sufficiency of responses to requests for admission to be filed prior to the deadline for the plaintiff's pretrial disclosures for the first testimony period.

Confidentiality

Automatic Imposition of Standard Protective Order. The proposed amendments clarify that the Board's Standard Protective Order is automatically imposed in all inter partes proceedings. A copy of the standard protective order is available on the USPTO website.

Board Discretion Concerning Treatment of Confidential Information. The Board may treat as not confidential material that "cannot reasonably be considered confidential," notwithstanding a party's designation.

Suspension

Discretion to Suspend Proceedings. The Board may suspend proceedings sua sponte and has discretion to condition approval of consented or stipulated motions to suspend on the provision by parties of necessary information about the status of settlement talks or discovery or trial activities.

Dispositive Motions

Timing for Summary Judgment Motions. Motions for summary judgment must be filed prior to the deadline for plaintiff's pretrial disclosures for the first testimony period.

Trial Procedures

Notices of Reliance. The proposed rules codify existing law that pleaded registrations and registrations owned by any party may be made of record via a notice of reliance. Internet materials may also be submitted under a notice of reliance under the proposed rules. Notices of reliance must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. Failure of a notice of reliance to meet this requirement would be considered a curable procedural defect.

Use of Depositions. Any motion to use a discovery deposition at trial must be filed with the party's pretrial disclosures. All depositions must also include a word index and must be submitted in full-size, not condensed, format.

Evidence Not Disclosed in Pretrial Disclosures. An adverse party would be permitted to move to quash a notice of deposition testimony if it was not included in the pretrial disclosure or move to strike testimony presented by affidavit or declaration that was not included in the pretrial disclosure.

Evidentiary Objections and Page Limits. The rules clarify that evidentiary objections may be set out in a separate appendix that does not count against the page limit for a brief and that briefs exceeding the page limit may not be considered by the Board.

Use of Testimony by Declaration or Affidavit. Parties may submit witness testimony by affidavit or declaration, subject to the right of any adverse party to take and bear the expense of oral cross-examination of that witness. The offering party must make witnesses testifying by declaration or affidavit available to their adversary.

Motion for Oral Examination of Deponent. A party may file a motion for oral examination of a witness who has been noticed for deposition by written questions.

Involuntary Dismissal for Failure to Take Testimony. If a plaintiff has not submitted evidence and its time for taking testimony has expired, the Board may grant judgment for the defendant sua sponte, even where the plaintiff has responded to the Board's show cause order for failure to file a brief but has either not moved to reopen its trial period or not been successful in any such motion.

Other Changes

Teleconferencing. Parties, examining attorneys, and members of the Board may attend hearings remotely through video conference.

New Matter Suggested by the Trademark Examining Attorney. If, during an inter partes proceeding involving an application, the examining attorney believes certain facts render the mark unregistrable, the examining attorney should formally request remand of the application rather than simply notifying the Board.

The rules, if approved, would apply to every currently pending and new case commenced after the effective date of the final rulemaking.

Comments to the proposed amendments will be accepted until June 3, 2016, and may be submitted via electronic mail to TTABFRNotices@uspto.gov. The full Notice is available here.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.