The Proposed TTAB Rules Package – What You Need to Know

On April 4, 2016, the U.S. Trademark Office announced the long-awaited proposed Trademark Trial and Appeal Board (TTAB) rule changes. The TTAB hears appeals from denial of trademark registrations (ex parte appeals) and holds trials between parties involving oppositions of pending trademark applications, cancellations of registered trademark, applications for concurrent use of a registered trademark, and interference proceedings (allinter partes proceedings). This is the first major change to the TTAB Rules since 2007. The goal of the proposed rule changes is to promote clarity and efficiency. The new rules would impact method of filing and timing and service for proceedings before the TTAB.

Here is a summary of the proposed changes:

• All documents that are to be filed before the TTAB will now be filed exclusively electronically through ESTTA, the TTAB electronic filing system, except in limited circumstances (Eastern Time continues to control the timeliness of filing dates).
• All notices, orders, and decisions from the TTAB will be sent by email.
• Paper filings for notices of opposition or petitions of cancellation will continue to be accepted in rare circumstances when ESTTA is not possible, but concurrent petition to Director (to the attention of TTAB) showing that ESTTA was unavailable or extraordinary circumstances.
• Service shifts back to the TTAB to serve the complaint (changes the previous shift in 2007 to the opposer/petitioner serving the complaint). The TTAB will serve the complaint by e-mail with a link to the complaint in TTABVUE (the TTAB public database).
• Parties to an inter partes proceeding are required to serve filings by e-mail, but the parties may stipulate to other methods of communications (e.g., file hosting service, delivery of a USB drive, etc.).
• If service by email is not possible due to technical problems or extraordinary circumstances, the party would have to include a statement with its submission or paper explaining why service by email was not possible and the certificate of service would have to identify the service method used.
• Codifies where no answer is filed, and one is expected, all other deadlines are tolled; however if the parties continue to litigate after an answer is late-filed, the TTAB will generally consider such actions as a waiver of the technical default.
• Notices of opposition under the §66(a) of the Trademark Act must identify the goods and services opposed and the grounds for the opposition on the ESTTA cover; no amendment to expand the opposition to cover goods/services or the grounds beyond those referenced in the ESTTA cover sheet will be allowed.
• No amendment to add a joint opposer may be made after the time for period for filing a Notice of Opposition.
• In a cancellation proceeding, a duty exists to notify the TTAB of attorney and contact information that could be a possible representative of the registered owner.
• A duty exists to notify the TTAB of any related proceeding that serves as, or in essence could be viewed as, a counterclaim.
• Notification on non-delivery of TTAB electronic notice of institution may prompt additional notice of commencement of the case by publication in the USPTO Official Gazette.
• Previously additional five-day time for response in the rules due to for mail delays is now eliminated.
• Response period for a motion would be initiated by its service date and runs for 20 days.
• Response period for summary judgment motions would remain 30 days.
• Discovery is streamlined and the concept of "proportionality" is codified.
• Interlocutory Attorney (IA) is encouraged and may participate, at his/her own initiative, in discovery conference when the IA considers it useful.
• Discovery must be served early enough in the discovery period so that it is complete by close of the discovery period.
• Motions to compel initial disclosures must be filed within 30 days after the deadline for initial disclosures.
• Requests for Admissions and Requests for Productions are limited to 75.
• Permits one comprehensive request for admission where the producing party would authenticate all produced documents or specify which documents cannot be authenticated.
• Discovery dispute would have to be resolved promptly following the close of discovery: motions to compel discovery must be filed prior to the deadline for plaintiff's pretrial disclosures for the first testimony period.
• The TTAB will be able to reset the pretrial disclosure deadline and testimony periods after resolving any motions relating to discovery.
• The TTAB's standard protective order will be imposed on all inter partes proceedings, although the parties will have the flexibility to move forward under an alternative order by stipulation or motion approved by the TTAB. [NOTE: the TTAB new standard protective order goes into effect on June 24, 2016.]
• The TTAB may treat materials as "not confidential" where the material cannot reasonably be considered confidential, even if the parties designate otherwise.
• Trial proceeding is suspended upon a filing of a timely potentially-dispositive motion.
• Motions for summary judgment would have to be filed prior to the deadline for plaintiff's pretrial disclosures for the first testimony period.
• Pretrial conference would be limited to exercise only by TTAB, upon the TTAB's initiative.
• Streamlined trial procedures including unilateral option for trial testimony by affidavit or declaration subject to the right of oral cross examination by the adverse party(ies) and parties are able to stipulate that they can reply on summary judgment materials as trial evidence.
• Codifies that pleaded registrations and registrations owned by any party made of record may be made by notice of reliance by submitting current printout of information from the USPTO electronic database records showing current status and title (in addition to being previous allowed at the time of notice of opposition or petition for cancellations).
• Codifies Safer, Inc. v. OMS Investments, Inc. that internet materials may be submitted under a notice of reliance.
• New subsection added for notice of reliance that notice indicates general relevance of the evidence presented and to associate it with one or more of the issues in the proceeding; however failure of notice of reliance to meet this new requirement would be considered a curable procedural defect.
• Parties must file a motion to use a discovery deposition at trial along with its pretrial disclosures.
• An adverse party may move to quash a notice of testimony deposition if the witness was not included in the pretrial disclosures.
• An adverse party may move to strike testimony presented by affidavit or declaration if the witness was not included in the pretrial disclosure.
• Duty to inform other party when a prospective witness outside of the United States will be in the jurisdiction of the United States during discovery and during trial.
• Makes clear that file histories of subject applications or registrations are evidence of record, statements in affidavits or declarations in the file are not evidence.
• Testimony deposition transcripts that are included as evidence must be clear and legible, include a word index, and must be submitted in full size (not condensed to multiple pages per sheet).
• The TTAB may, on its own, grant judgment for the defendant when the plaintiff has not submitted evidence.
• Evidentiary objections may be set out in a separate appendix that does not count against the page limit for a brief (or raised in a separate paper rather than the brief).
• Briefs exceeding the page limit may not be considered by the TTAB.
• Clarifies that in ex parte appeals, new evidence may not be submitted after the notice of appeal (new evidence may be added when attached to a timely filed motion for reconsideration or by a request for remand).
• Reply briefs in ex parte appeals will be limited to 10 pages.
• Citation to evidence in ex parte appeal briefs will be to the documents in the electronic application record by docket entry date and page number.
• Encourages Examining attorneys who believe that certain facts may make an applied for mark unregistrable in inter partes proceedings unregistrable to formally request remand of the application from the Trademark Examining Operation rather than simply notifying the TTAB.
• Remote attendance of TTAB hearings through video conference is now possible, but only with permission from the TTAB.
• All notices of appeal to the United States Court of Appeals for the Federal Circuit must be filed with the USPTO's Office of General Counsel and a copy filed with the TTAB through ESTTA.
• Clarification that when review of a TTAB inter partes decision by commencing a civil action is sought, a notice of commencement must be filed with the TTAB though ESTTA to avoid premature termination of the TTAB proceeding during pendency of the civil action (both notice and a copy of the complaint for review of an ex parte decision by way of civil action are to be filed with the USPTO's Office of General Counsel with a copy to be filed with the TTAB through ESTTA).

Sixteen individuals and organizations commented on the proposed TTAB Rules package. You can review the comments here. The U.S. Trademark Office is hosting a "Report Out" of the TTAB Rules comments on June 24, 2016 (1:00 pm - 2:30 pm ET). I will attend the "Report Out" by webcast and report more soon.