Today, Chief Administrative Trademark Judge Gerard F. Rogers posted on the TTAB rule changes:
"The Trademark Trial and Appeal Board (TTAB) announced the
culmination of an in-depth outreach effort to stakeholders focused on enhancing the Board’s appeal and trial processes. In a Notice of Final
Rule-Making (NFRM), published in the Federal Register on October 7, 2016,
the USPTO said new rule changes will benefit the public by providing more
clarity in the rules, flexibility for parties involved in Board proceedings,
and increased procedural efficiency. At the same time, the rules further a
USPTO strategic objective to increase end-to-end electronic processing of
trademark matters, which reduce costs to the USPTO and the public, and helps
avoid errors that may creep into records during manual entry of data contained
in paper filings.
The last major set of TTAB rule changes took effect in 2007. Since
then, there have been case law developments, changes in the Federal Rules of
Civil Procedure, and the rollout of the USPTO’s Accelerated Case Resolution
(ACR) process. Therefore, it is an ideal time to update the rules to make the
benefits of ACR available to all parties, as well as to promote electronic
filing and communication. The rule changes, major provisions of which are
summarized below, reflect significant input from the Trademark Public Advisory
Committee, individual stakeholders, and professional associations, and have
been well-received since publication in the Federal Register.
One of the most overarching rule changes involves the Board
assuming responsibility for service of the complaint filed to initiate an inter partes proceeding. This rule change shifts responsibility for service of the complaint in an opposition or cancellation proceeding from the plaintiff to the Board, in an effort to reduce the responsibilities of litigants during the
commencement of a proceeding.
Another exciting change is the Board moving exclusively to use of
electronic filings and communication. In this new all-electronic environment,instead of mailing hard copies of institution orders and complaints, the Board forwards an order by email, with a link to both the proceeding file and the complaint, as displayed in the Board’s electronic docketing system known as TTABVUE. The rule changes also mandate that parties file documents through
ESTTA, the Board’s electronic filing system. That requirement results in cost-savings to the USPTO and to private litigants, and will increase the efficiency with which the Board can process matters. Finally, filings and papers are now required to be exchanged between parties by email, with exceptions made for technical problems or extraordinary circumstances; and to
allow the parties flexibility, they may agree to alternate methods of communication or exchange of documents and information that work best in their particular circumstances.
Reflecting recent amendments to the Federal Rules of Civil
Procedure, new discovery provisions in the rule changes help curtail abuse and reduce litigation expense for stakeholders. The number of requests for production of documents and requests for admission are now limited to 75, paralleling the current limitation on interrogatories. To avoid disadvantaging
parties that use requests for admission to authenticate produced documents, the changes provide for one comprehensive request for admission to the producing party to seek authentication of identified documents or specification of those documents which cannot be authenticated. This option facilitates introduction
of produced documents at trial by notice of reliance, rather than through painstaking witness identification and testimony, thereby providing the parties
more flexibility during trial. Finally, the rule changes afford the parties
substantial flexibility to stipulate to various limitations on discovery in
terms of duration, number of requests, and the elimination of discovery
altogether.
Additionally, the rule changes establish new deadlines in
discovery, paving the way for another significant change -- a requirement that
motions to compel discovery or to determine the sufficiency of responses to
requests for admission be filed prior to the deadline for plaintiff’s pretrial
disclosures. These revisions help parties avoid the expense and uncertainty
that arise when discovery disputes erupt on the eve of trial and ensure parties
make pretrial disclosures and engage in trial preparation only after all
discovery issues have been resolved. As with the timing of motions relating to
discovery disputes, motions for summary judgment must be filed prior to the
deadline for plaintiff’s pretrial disclosures. This avoids disruption of trial
planning and preparation which can occur by filing such motions late in the
process.
ACR procedures have proven particularly effective at streamlining trial proceedings. These include agreements to limit discovery and to shorten
trial periods or the time between trial periods, and stipulations to certain
facts or to the admissibility of documents or other evidence. Accordingly,
parties are still able to enter into stipulations regarding proffers of
testimony, but the rules allow any party unilaterally to choose to present
trial testimony by affidavit or declaration, subject to the right of
cross-examination by the adverse party or parties.
Finally, the rule changes include expanding the parties’ options
through which evidence is submitted during trial. Parties may now make of
record, via notice of reliance, pleaded registrations and registrations owned
by any party by submitting a current copy of information from the USPTO
electronic database records showing current status and title; and the rule
changes codify this option. In addition, parties may now also use the notice of
reliance method for submitting internet materials.
The rule changes become effective January 14, 2017, and apply to
all proceedings pending at that time or begun thereafter. All employees at the
Board, including our 243 information specialists and paralegals, our 245
attorneys, and our judges, have been involved in identifying these
improvements, and we strongly believe that these changes help streamline our
trial proceedings and avoid unnecessary expense and complications for parties
involved in our cases. We continue to welcome any feedback you have on
TTAB trial proceedings in order to increase clarity, efficiency, and
effectiveness of our processes."
Copyright © 2016 Robert Moll. All rights reserved.
