Significant TTAB Rules Amendments to Take Effect in 2017 | Practical Law

Significant TTAB Rules Amendments to Take Effect in 2017 | Practical Law

The US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) has finalized significant rules amendments that will take effect in January 2017. The amendments will affect all stages of TTAB proceedings like oppositions and cancellations, including filings, service, discovery, motions, and trials.

Significant TTAB Rules Amendments to Take Effect in 2017

Practical Law Legal Update w-003-8524 (Approx. 5 pages)

Significant TTAB Rules Amendments to Take Effect in 2017

by Practical Law Intellectual Property & Technology
Published on 10 Oct 2016 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) has finalized significant rules amendments that will take effect in January 2017. The amendments will affect all stages of TTAB proceedings like oppositions and cancellations, including filings, service, discovery, motions, and trials.
On October 7, 2016, the Trademark Trial and Appeal Board (TTAB) announced finalized amendments to the Trademark Rules of Practice (Rules) (81 FR 69950-01, (Oct. 7, 2016)). These amendments will take effect on January 14, 2017, and will apply to all pending and new cases. A chart summarizing these amendments can be found on the TTAB's website.
The TTAB aims to simplify and streamline filing and service, discovery, and trial procedure by:
  • Establishing new TTAB practices and procedures.
  • Clarifying and codifying existing case law and TTAB practices.
The TTAB first announced proposed amendments in April of this year and sought feedback from the public. Below is a list of the more significant changes and clarifications reflected in the amendments.

Filing and Service Changes

  • Parties will have to file all documents electronically through the Electronic System for Trademark Trials and Appeals (ESTTA) unless the TTAB grants a petition for exception based on technical problems or other extraordinary circumstances.
  • Returning to pre-2007 procedure, the challenging party will no longer need to serve its complaint on the defending party. The TTAB will notify the defending party by email with a link to the complaint.
  • Parties will have to serve all papers on adverse parties by email unless the parties stipulate otherwise. The TTAB will eliminate the five-day extension of response deadlines for service by mail.

Discovery

  • The revised Rules will incorporate the discovery "proportionality" principle set out in the 2015 Federal Rules of Civil Procedure amendments.
  • Motions to compel initial disclosures will be due within 30 days after the initial disclosure deadline.
  • Document requests and requests for admissions, currently without an explicit number limit, will each be capped at 75 per party, matching the existing 75-interrogatory per party limit.
  • Each party will be able to serve one comprehensive request for admission asking the opposing party to:
    • admit the authenticity of all documents that it produced; or
    • specify which documents it cannot authenticate.
  • The interlocutory attorney will be able to participate sua sponte in any discovery conferences.
  • Discovery will have to be served early enough for responses to be due by the close of discovery.
  • Parties will be required to inform adverse parties when prospective witnesses outside the US will be present in the US.

Motions

  • Motions to compel and summary judgment motions will be due before the deadline for pretrial disclosures.
  • All 15-day response deadlines on motions (deadlines for oppositions to motions other than summary judgment motions and all reply brief deadlines) will be extended to 20 days from service of the preceding brief.

Evidence Submission and Trials

  • Parties will be allowed to submit direct examination trial testimony by affidavit, subject to the adverse party's right to conduct a live cross-examination deposition at its own expense.
  • Parties will be required to submit testimony deposition transcripts in full-sized format with a word index.
  • All evidentiary objections will have to be set out in a separate appendix to the trial brief that will not count against the brief page limit.
  • Parties and their counsel will be permitted to attend live hearings remotely by video conference.
  • Notwithstanding the parties' confidentiality designations, the TTAB will be able to treat improperly designated material as not confidential.

Free Webinar

Learning and adapting to comprehensive rule revisions such as these can be a daunting challenge for practitioners. Be sure to reserve 1:00 pm - 2:00 pm EST on Thursday, November 10, 2016 for our free webinar on these amendments. Practical Law editors will discuss these changes with representatives from the TTAB, including Senior TTAB Counsel (and TBMP editor) Cheryl Butler. CLE credits will be available in many states.
Registration will open soon.