New Trademark Trial and Appeal Board Rules to Take Effect November 1
New procedural rules take effect Nov. 1, 2007 in the Trademark Trial and Appeal Board ("TTAB” or “Board”) of the Patent and Trademark Office that will significantly affect practice in inter partes cases (oppositions and cancellations) before that administrative tribunal, especially regarding the initiation of new proceedings and the conduct of fact discovery.
Executive summary of rule changes:
- The party filing the initial pleading must serve it on other party; the TTAB will no longer forward the initial pleading to the applicant/registrant.
- Parties are to have an initial discovery conference and make initial disclosures.
- Expert disclosure is to be made halfway through the discovery period, and parties must also make pre-trial disclosure of witnesses and documents.
- The table of contents, index of cases, and description of the record all “count” toward page limitations on motions.
The stated purpose of the new rules is to increase procedural efficiency in connection with the commencement of inter partes cases, and to adopt a modified form of the disclosure practice that is currently followed by the federal courts. In particular, the rules require an initial conference and initial disclosures, a condition that was not previously part of TTAB practice.
The rules have not been received without criticism. Some observers speculate that the new disclosure rules will make TTAB practice more expensive and more like federal trademark infringement litigation, notwithstanding the fact that TTAB proceedings only address the limited question of whether a party has right to obtain or maintain a federal registration for its trademark. Criticism has also been leveled at the new rules relating to the service of pleadings because the changes appear to be designed chiefly to shift the costs of service from the TTAB to the initiating party, rather than to increase efficiency.
New rules relating to service of pleadings
Under the new rules, the party initiating the opposition or cancellation must serve the pleading on the other party, using the correspondence address of record in the Patent and Trademark Office. The specific rule changes are as follows:
- Rule 2.99: For concurrent use applications, applicant must serve copies of application on registrant(s) after notice of institution of proceeding; TTAB will no longer serve applications.
- Rule 2.101: For opposition proceedings, opposer must serve notice of opposition on applicant and must include proof of service in its filing with the TTAB. Opposer must notify TTAB within 10 days if service copy of notice of opposition is undeliverable.
- Rule 2.105: TTAB no longer responsible for serving initial pleading, but still must transmit to applicant a notice that opposition has been filed and setting date for answering pleading. The TTAB may do so by email (this latter provision was effective Aug. 31, 2007).
- Rules 2.111 and 2.113: Same changes as in 2.101 and 2.105, for cancellation proceedings.
- Rule 2.119: Parties may agree to serve papers by email/fax. (This rule was effective Aug. 31, 2007.)
New rules relating to discovery
The new rules on disclosure build in more extensive up-front discovery as well as more pre-trial discovery. Yet the Board still actively encourages early settlement: the Board's commentary on the new rules reflects that motions to suspend for the purpose of conducting settlement talks, and motions directed to the pleadings, will continue to operate to stay proceedings. (However, motions made after the answer is filed and before initial conference are likely not to be granted, because the initial conference provides an opportunity to discuss settlement.)
The parties also may stipulate to a change in the discovery schedule, but such changes must be approved by the TTAB. Indeed, in its commentary the Board urges parties to be flexible. For example, the Board suggests that the parties, in appropriate cases, consider using initial disclosures as their only discovery mechanism; alternatively, parties may agree to forego initial disclosures altogether, again where appropriate and subject to TTAB approval.
The new disclosure rules are as follows:
- Rule 2.116(g): The TTAB's Standard Protective Order will govern every case, unless the parties separately agree to a different form of protective order and the TTAB approves.
- Rule 2.118: The TTAB may publish notice of the proceeding in the Official Gazette, if the initial pleading is undeliverable.
- Rule 2.120(a)(1)-(3): (Primary section dealing with discovery conference/initial disclosures.) The provisions of Rule 26 of the Federal Rules of Civil Procedure shall apply, requiring an initial discovery conference between the parties to discuss the subjects set forth in Rule 26(f) of the Federal Rules, and requiring the initial disclosures required by Rule 26(a)(1) of the Federal Rules.
- Rule 2.120(d)(1): TTAB must approve any increase in number of interrogatories beyond 75.
- Rule 2.120(e): Motions to compel may address initial disclosures and expert disclosures; for these types of disclosures, any motion to compel must be filed prior to close of discovery and will not toll that discovery period (this is not true of other motions to compel).
- Rule 2.120(f): Motions for protective order also may cover initial disclosures and expert disclosures.
- Rule 2.120(g): Motions for sanctions may be filed in connection with initial disclosures and failure to participate in discovery conference.
- Rule 2.120(h)(2): Motion to test the sufficiency of an answer will not toll the time to respond to any outstanding discovery request, but no new discovery requests may be filed during pendency of motion.
- Rule 2.120(i): Clarification of rules relating to telephone and in-person conferences.
- Rule 2.120(j): Clarification of rules relating to written disclosures and disclosed documents, as to how they may be used as evidence
- Rule 2.121: Pretrial disclosure of witnesses required 15 days before opening of testimony period.
- Rule 2.122: Parties no longer need to file two copies of trademark registration in order to show status and title; the parties may instead file copies of TARR and Assignment records from USPTO electronic databases.
- Rule 2.123(e): Motions to strike may include motions based on lack of proper/adequate pretrial disclosure.
- Rule 2.127(e)(1) and (2): Motions for summary judgment not permitted until after initial disclosures made; written disclosures and disclosed documents may be used in support of a summary judgment motion.
Typical schedule in the TTAB under the new rules
The TTAB's commentary to the new rules explains that the following basic time periods will now apply in most cases (timed from the date of the Board's “institution order”):
40 days: Answer due
70 days: Discovery opens (lasts 180 days)
100 days: Initial disclosures due
220 days: Expert disclosure
250 days: Discovery closes
295 days: Plaintiff's pretrial disclosures
340 days: Plaintiff's testimony period closes
355 days: Defendant's pretrial disclosures
400 days: Defendant's testimony period closes
445 days: Plaintiff's rebuttal period closes
The new rules also remove the option of making submissions on CD-ROM (Rule 2.126)—no great surprise there—and clarify what parts of a motion must be counted towards the page limitation for such motion (Rule 2.127(a)). Somewhat surprisingly, tables of contents, indexes and the like will all be counted towards that page limit.
Separately, it is worth noting that another significant change in TTAB practice was effected earlier this year. In January, the TTAB issued a Notice that all decisions of the TTAB may be cited in papers filed with the Board, regardless of whether the decisions were previously designated as “not citable.” Going forward, the Board will only designate decisions as precedential or non-precedential, and precedential (formerly “citable”) decisions bind the TTAB in future cases. Non-precedential decisions can be cited to the Board, but are not binding. This change will no doubt be very helpful to practitioners, since in previous years the number of citable decisions made up a very small portion of final decisions issued by the TTAB (for instance, 57 of 500 final decisions in 2005 were citable).