The Trademark Trial and Appeal Board (the “Board”) of the U.S. Patent and Trademark Office hears applicant appeals from the final decisions of trademark examiners, and oppositions to trademark applications, concurrent use proceedings, and cancellation proceedings against trademark registrations. The proceedings are held on a paper record with oral arguments by counsel. Matters before the Board are governed by the Trademark Rules of Practice. Motions are decided by and hearings are held before panels of three administrative law judges. On April 4, 2016, the TTAB published in the Federal Register proposed amendments to the Rules of Practice for public comment by June 3, 2016.
The proposed amendments, if adopted, would be the first major set of rule changes since 2007. They are intended to increase the efficiency of TTAB proceedings, adopt procedures to take advantage of technology improvements, import new discovery rules from the Federal Rules of Civil Procedure (which govern federal court practice), reflect precedential decisions of courts and the Board, alter the current deposition practice, and require electronic submission of all documents except in rare cases. The Board intends to apply the new rules to every pending case and every new case commenced on or after the effective date of the new rules.
The Board’s ESTTA electronic filing system has been active since 2002, and electronic filings now account for over 95% of submitted documents. Where the Board has been provided with e-mail addresses, it also communicates with the parties through e-mail for notices, orders, and decisions. Since 2006, the entire file of a Board proceeding is available through TTABVUE, the Board’s database of electronic case files. The proposed rules make mandatory electronic filing and e-mail notices, orders, and decisions. Rare exceptions will be made where electronic filing of a document is not possible, but the party must petition the Director to show that ESTTA was unavailable due to technical problems or extraordinary circumstances otherwise prevented electronic filing. The Board will also make accommodations where more serious circumstances affect its filing systems, such as the disruption to service that occurred in December 2015.
In addition to continuing to require parties to begin a proceeding by choosing from a list of the relevant grounds for opposition or cancellation, the proposed rules will require the defendant to inform the Board of any related proceedings that could be viewed as a counterclaim. Cancellation plaintiffs would have to provide contact information, including an e-mail address, for any attorney they reasonably believe is a possible representative of the owner concerning the challenged registration. In that way, if the Board’s notice of the cancellation proceeding is returned as undeliverable, the Board will have an alternative for locating the owner of the registration. Attorneys that are so identified will not be considered counsel of record for the defendant unless they file a power of attorney or make an appearance in the proceeding. The Board may also give additional notice of commencement of the proceeding by publication in the Official Gazette, along with other appropriate and available means to reach the real party in interest with notice of the proceeding.
Since 2007, the Board has required the plaintiff to serve the Notice of Opposition or Petition for Cancellation on the defendant. The proposed rules shift that responsibility back to the Board, which will provide the defendant with a link to the document in TTABVUE. In the case of challenges to Madrid Protocol extensions of protection, the Board proposes also to service the international registration holder’s representative.
Also since 2007, parties have been encouraged to agree to serve documents on each other by electronic means. The proposed rules will require electronic service of all Board filings and other papers (such as disclosures and discovery) that are not filed with the Board. Nevertheless, the parties will be permitted to stipulate to other convenience and expeditious methods, such as a cloud storage file hosting service or delivery of a USB drive. The Board will no longer provide the five additional days for responses to account for postal mail delays. Response periods of 20 days (30 days for summary judgment motions) will run from the service date.
The Board proposes to bar service of submissions by postal mail if the party is not domiciled in the U.S. and is not represented by an attorney or other authorized representative located in the U.S.
Discovery and Pretrial Procedures
The Board proposes to adopt a new requirement from the Federal Rules of Civil Procedure that discovery requests are subject to review for “proportionality.” Parties will be allowed by stipulation to shorten discovery periods, limit the number of discovery requests, use reciprocal disclosures instead of discovery, or eliminating all discovery. The proposed rules would also refer explicitly to the discovery of electronically stored information and tangible things. The Board does not want to encourage burdensome and expensive e-discovery, particularly because it has a narrower scope of jurisdiction than do federal courts, and proposes to weigh heavily the burden and expense of e-discovery, while recognizing that many relevant documents are kept in electronic form.
Motions to compel initial disclosures must be filed within 30 days after the disclosure deadline. Discovery requests must be served enough in the discovery period that responses are due and completed before the close of discovery. An expert disclosure deadline must be set prior to the close of discovery. Motions to compel discovery or to decide the sufficiency of responses, and motions for summary judgment, must be filed prior to the deadline for the plaintiff’s pretrial disclosures for the first testimony period, rather than the commencement of the first trial period. The Board contemplates re-setting the pretrial disclosure deadline and testimony periods after resolving any discovery disputes, allowing time for compliance with any discovery-related orders requiring additional responses or production. Discovery motions must show that the moving party made a good faith effort to resolve the issues.
Requests for production of documents and requests for admission will be limited to 75, the current number of interrogatories permitted. Motions for additional interrogatories would be barred. All parties who receive documents may serve one comprehensive request for admission on the producing party to authenticate all produced documents or specify what documents cannot be authenticated. Any agreement by the parties about the location of a discovery deposition must be in writing.
Although many contested proceedings are quickly settled, withdrawn, or decided by default, where the parties’ interactions are contentious the Board’s Interlocutory Attorneys are encouraged to participate in the parties’ conferences, and may do so in their own discretion if they consider it useful. The new rules would expand the circumstances under which the parties could request a conference with the Interlocutory Attorney to any circumstances where a conference would be beneficial.
Parties would have a duty throughout the discovery period and during trial to inform adverse parties if witnesses located in other countries are expected to be present in the U.S. and could be produced for deposition.
The Board’s standard protective order for confidential material, adopted in 2007, is imposed in all concurrent use, opposition, and cancellation proceedings. Parties could stipulate to or move for alternative protective orders. The Board further proposes to treat as non-confidential any material that cannot reasonably be considered confidential.
The proposed rules codify the Board’s practice that certain types of consented motions for extensions and suspension are granted automatically but that the Board reserves the right to require conditions to be met prior to approval. Where paralegals act on certain matters under the designation “By the Trademark Trial and Appeal Board,” those dispositions would have the same effect as orders by the three-judge panel. In addition, trial proceedings will be suspended if a party files a potentially case-dispositive motion. The Board would limit the number of granted extensions of the discovery period.
Pre-trial conferences for resolution of complex issues would be convened only by the Board, and only on the Board’s initiative.
The Board’s Accelerated Case Resolution System (ACR) has commonly been used to permit the parties to submit their case on cross motion for summary judgment in place of a trial record and hearing briefs with the Board resolving issues of fact that otherwise might be subject to dispute. Parties have also used ACR to make agreements to limit discovery, shorten trial periods, stipulate to facts or admissibility of documents or other evidence, offer testimony through declarations or affidavits rather than depositions, and rely on summary judgment materials as trial evidence. The Board proposes to codify those practices by specifically providing for such stipulations and, most importantly, by allowing a unilateral right to present trial testimony by declaration or affidavit, subject to the other party’s right to oral cross examination.
Two proposed practice changes made necessary by court decisions permit certain documents to be made of record by notice of reliance – pleaded registrations and registrations owned by any party and Internet materials. The registrations would be made of record either by attaching them to the Notice of Opposition or Petition for Cancellation or by attaching to a notice of reliance printouts from the USPTO database showing the current status and title of the registration. Internet materials could be submitted under notice of reliance. The notice of reliance must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. However, to curtail motions being filed on this point, failure to do so would be a curable procedural defect. In addition, although the file history of the challenged application or registration is automatically of record in the proceeding, the proposed rules clarify that statements in affidavits or declarations in that file history are not evidence in the proceeding.
A motion to use a discovery deposition at trial must be filed with the party’s pretrial disclosure. Adverse parties could prevent the taking of a testimony deposition or move to strike testimony presented by affidavit or declaration if the witness was not included in the pretrial disclosure.
Parties would be required to disclose if a prospective trial witness located outside the U.S. will be within the U.S. during the trial period.
Additional proposals cover technical details for filing testimony deposition transcripts, the right of the Board to grant judgment for the defendant when the plaintiff fails to submit evidence, the form for submitting evidentiary objections outside the page limit for the trial brief, evidence and reply brief rules for appeals of examiner final decisions, video conference options for hearings, automatic tolling of deadlines when no answer is filed, pleading grounds for opposition to a Madrid Protocol application, and requirements for timing and manner of filing appeals of Board decisions.
A controversial change is the right to present evidence by affidavit or declaration, subject to the adverse party’s right to cross-examine. A little-noticed but potentially useful change is the opportunity to take oral depositions of foreign witnesses traveling in the U.S. in place of the cumbersome requirement to take their testimony by written questions. Application of the new proportionality discovery rules can be expected to spawn large numbers of motions by individuals or small companies responding to discovery by large companies, so it remains to be seen whether the Board will accomplish its plan to streamline discovery and speed up proceedings with these rules.
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