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IP&T Updates Resources to Reflect Revised Trademark Rules
Practical Law Legal Update w-005-3714 (Approx. 4 pages)
IP&T Updates Resources to Reflect Revised Trademark Rules
by Practical Law Intellectual Property & Technology
| Law stated as of 17 Jan 2017 • USA (National/Federal) |
Significant amendments to the Trademark Rules of Practice (Trademark Rules) took effect on January 14, 2017. Generally, the amendments aim to simplify and streamline filing and service, discovery, and trial procedure in proceedings before the Trademark Trial and Appeal Board (TTAB). This Update identifies Intellectual Property & Technology resources affected by these changes and provides links to the updated resources.
Significant amendments to the Trademark Rules of Practice (Trademark Rules) took effect on January 14, 2017. With these amendments, which apply to all pending Trademark Trial and Appeal Board (TTAB) proceedings, 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 most significant of these changes affect nearly every aspect of TTAB practice, including:
- Pleading and filings by, for example:
- reviving the pre-2007 practice of not requiring parties to serve initial pleadings;
- establishing fees for certain extensions of time to file opposition or cancellation proceedings;
- requiring email service of all papers; and
- eliminating paper filings except under narrow exceptions.
- Discovery by, for example:
- expressly adopting the FRCP's proportionality standard;
- introducing number limits for requests for production and requests for admissions (RFAs);
- adding an extra RFA for bulk authentication of evidence; and
- requiring parties to serve discovery requests early enough that responses are due by the close of discovery.
- Motion practice by, for example:
- imposing new deadlines for some motions and replies; and
- providing for automatic suspensions under certain circumstances.
- Trials by, for example:
- allowing submission of direct examination trial testimony by affidavit or declaration;
- permitting submission by notice of reliance of documents authenticated in response to an RFA; and
- introducing remote attendance at live hearings by video conference.
A chart summarizing these amendments can be found on the TTAB's website.
For an on-demand recording of Practical Law's discussion with TTAB attorneys about these amendments see Webinar, From the Source: A Discussion with the TTAB About Changes to its Rules.
Practical Law IP&T has revised the following resources to reflect these amendments.