New Rules to trademark practice before the Trademark Trial and Appeal Board ("TTAB" or the "Board") went into effect on January 14, 2017. The amendments reflect a movement towards consistency with the Federal Rules of Civil Procedure. All filings conducted with the Board must now be made electronically through the Electronic System for Trademark Trial and Appeals ("ESTTA"). The new rules apply to proceedings that were pending before the TTAB on January 14, 2017 or matters initiated after January 14, 2017.
The objective of the new Rules is to provide clarity and allow for more efficient filings. Service of documents must now be made by email. With regard to the "complaint" either a Notice of Opposition or a Cancellation Petition, the Rules shift the burden of service back to the Board. In 2007, the USPTO had amended the Rules to require the Plaintiff to serve the complaint on the defendant, but this has changed. The Board will now serve the complaint in the form of a link to click on and to view the complaint or with the web address for the electronic filing system, "TTABVUE".
Service of all papers must now be made by email, unless the parties agree otherwise and put such agreement in writing, or in extraordinary circumstances a party can include a statement in the submission explaining why service by email was not possible. Since service will be by email, the five-day extension rule provided for mail will now be eliminated. There is a twenty-day response period for all submissions to the TTAB if you are submitting a document that was initiated by a date of service, except the response period for a summary judgment motion that is thirty days.
Regarding discovery, the parties can stipulate to limit discovery by shortening the period or can even eliminate it. For general information concerning discovery, see our web page entitled, An Overview Of Discovery In Board Proceedings. Motions to compel disclosure must be filed within thirty days after the deadline for initial disclosures. Discovery must now be served early enough in the allowed time period so that responses can be provided before the close of discovery. The number of requests for production of documents, requests for admission, and interrogatories are limited to 75, including subparts. In addition, motions to compel discovery, motions to test the sufficiency of responses or objections, and motions for summary judgment have to be filed before the first pretrial disclosure deadline.
Some consented motions for extensions and suspensions will continue to be granted automatically through the Board's electronic filing system. Moreover, a trial proceeding will be suspended upon the filing of a timely dispositive motion. The new Rules have continued the option for parties to stipulate to Accelerated Case Resolution ("ACR"). One way parties utilize ACR is that they agree that summary judgment cross motions will substitute for a trial record and traditional briefs at final hearing. The Board can resolve issues of fact that are subject to dispute. Other ways parties have adopted the ACR process are that they limit discovery, shorten trial periods, stipulate to facts or the admissibility of documents or other evidence, and to allow the option of trial testimony by affidavit or declaration, subject to the right of oral cross-examination by the adverse party. These alternatives are now codified by the new Rules.
Another codification that has arisen through case law precedent, trademark registrations owned by any party can be introduced into the record through a notice or reliance (by attaching it to the Notice of Opposition or Petition for Cancellation). A current copy should be produced from the USPTO database showing the status and title. In addition, Internet materials may be entered into the record through a notice of reliance. In doing so, you must indicate the relevance of the evidence and explain how it relates to one or more issues in the proceeding. Testimony transcripts must contain a word index. In summary, the new Rules seek to expedite process and procedure. Parties will be forced to consider important issues earlier in the process, which will in turn cause the parties to assess the potential for settlement at an earlier stage. If you have any questions concerning Board procedure or other trademark inquiries, please contact our office for a courtesy consultation.