United States: What's New With The Changes To The Trademark Trial And Appeal Board Rules Of Practice

The Trademark Trial and Appeal Board (TTAB or the Board) Rules of Practice will change on January 14, 2017. The new rules will be applicable to all inter partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings, including those pending on January 14, 2017.

The changes are generally not much of a surprise. Chief Judge Rogers has telegraphed that changes were coming since at least the summer of 2015. Many of the changes were heralded in TTAB prior decisions but are only now being formally incorporated into Title 37 of the Code of Federal Regulations. And the amendments are aimed at consistency with the Federal Rules of Civil Procedure (FRCP).

The main changes to be aware of are outlined below:

Discovery limitations and scheduling

One way in which the new rules are becoming more consistent with the FRCP is by addressing the idea of "proportionality" in discovery. The new rules limit the number of requests for production of documents and requests for admission to 75, the same as the current limit on interrogatories. Of course, 75 interrogatories are substantially more than the presumptive limit of 25 interrogatories in federal court.

Perhaps the most significant scheduling change is the new requirement that discovery must be served early enough so that responses will be provided and all discovery will be completed by the close of discovery. This deadline is common in federal court proceedings. But it puts an end to the practice in TTAB Proceedings of parties waiting until the last day of discovery, and then serving substantial discovery requests.

Additionally, the deadline for filing motions to compel discovery is now prior to the deadline for the plaintiff's pretrial disclosures. Under the current, and soon-to-be old rules, motions to compel could be filed up to the day before trial. In presentations on the new rules, Judge Kuhlke has emphasized that an important goal of these new rules is to minimize surprises on the eve of trial. The Board saw that these late motions caused too many delays and too much uncertainty in the proceedings. In keeping with this goal, motions for summary judgment will also need to be filed prior to the plaintiff's pretrial disclosure deadline. From an attorney standpoint, this means discussing and planning for discovery and dispositive motions earlier in the case and, potentially, increasing the likelihood that cases will settle earlier in the process.

Testimony

One trial procedure amendment may be a significant change. Under the new rules, parties can submit witness testimony by affidavit alone. Previously, witness testimony had to be taken by live deposition. Since TTAB testimony occurs outside the presence of a judge or jury, direct testimony was often an overly scripted affair. Now that same script is provided in an affidavit instead of having to do live testimony. Under the new rules, an in-person deposition is only necessary if the opposing party demands it to cross examine the affidavit.

This change will likely lead to parties submitting more evidence at trial since it will be much easier to submit evidence by affidavit compared to live testimony. This additional evidence can increase the cost and length of trial. The change may also put a greater burden on the defendants—especially where a plaintiff produces affidavits from multiple witnesses. Previously, the onus was on the plaintiff to prepare and present the witness for live testimony in support of its evidence. The plaintiff was more likely to narrow the number of witnesses to minimize the burden and expense of live testimony. But, under the new rules it is easier for plaintiffs to authenticate disparate pieces of evidence through multiple witnesses, rather than going through the time and expense of presenting live testimony from additional, otherwise unnecessary, witnesses. Now, the onus is on the defendant to decide which of the plaintiff's witnesses is important enough to cross examine.

It is also interesting to note that removing the live testimony requirement is one way the Board will make its proceedings less like federal court proceedings. This move runs counter to the reasoning in the 2015 Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc., which held that issue preclusion may apply when litigating a matter in district court that was previously adjudicated by TTAB, primarily because TTAB and federal court proceedings share similarities, including live testimony.

Electronic filing

Many of the new rules have to do with adopting procedures facilitating electronic filings and communication. The new rules require all filings be made electronically, through ESTTA (Electronic System for Trademark Trials and Appeals). This includes the notice of opposition, answer, and all other filings. This change largely solidifies already standard practice for most attorneys.

Service and electronic communication

Under the current rules, the plaintiff is required to serve the complaint on the defendant. The new rules now shift the responsibility of service to the Board. But, in keeping with the theme of facilitating electronic communication, the Board will serve the complaint on the defendant as a link to the TTAB's electronic case file system, known as the Trademark Trial and Appeal Board Inquiry System (TTABVUE).

The new rules also require service by email between the parties for all TTAB filings and any other papers served on a party, such as disclosures and discovery. This change should also align with already accepted practice by most attorneys, and will save the extra step of stipulating to service by email.

Given that service by email will now be required, the Board will remove the additional five days added to the response period for documents served by mail. The response period for motions will now run for 20 days, although the response period for summary judgment motions will remain 30 days.

Other miscellaneous changes

An additional change to case scheduling provides that proceedings will be suspended upon filing of potentially dispositive motions. The new rules clarify that the Board's standard protective order is automatically applicable in all inter partes proceedings.

Finally, the new rules codify existing law that pleaded registrations may be made of record through a notice of reliance, along with a current copy of the relevant information from the USPTO electronic database. The new rules also codify existing law that internet materials may be submitted via a notice of reliance.

Conclusion

Most of these changes should accelerate proceedings, which would meet the TTAB's goal of making TTAB proceedings more cost effective and efficient. But the new rules could also increase the costs for parties by pushing deadlines and more work to earlier in the case—before the parties are able to reach a settlement or resolve the case with motion practice. These accelerated deadlines could also lead to parties being less likely to invest the time in settlement when they are working on and have already expended substantial costs on the substantive issues of the case. Alternatively, as judges often say, nothing pushes a case to settlement faster than a deadline. Parties could now be even further incentivized to settle early and often to avoid additional costs. It will be an interesting period of adjustment as the Board and attorneys implement the new rules.

Originally published in IP Watchdog​ on October 26, 2016.

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
Events from this Firm
20 Sep 2018, Other, California, United States

CoinAlts is designed to bring together the thought leaders in the cryptocurrency investment space to discuss the investment, legal and operational is​sues for cryptocurrencies as a new asset class.

25 Sep 2018, Conference, California, United States

We're excited to introduce Women's IP Strategy, a 2-day conference that tackles both the IP, legal as well as broader career development obstacles, risks and rewards for women lawyers working in male-dominant industries.

2 Oct 2018, Webinar, California, United States

This CLE webinar will offer suggestions to litigators to help them comply with the new GDPR during e-discovery.

Similar Articles
Relevancy Powered by MondaqAI
BakerHostetler
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
BakerHostetler
Related Articles
 
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions