The U.S. Patent and Trademark Office recently published a notice of proposed changes to the rules of practice before the Trademark Trial and Appeal Board (TTAB), particularly to trademark application oppositions and registration cancellation proceedings. These proposed rule revisions, the first proposed by the PTO in the past decade, could have significant impact on practice before the TTAB. Although this Blog is dedicated to local rules at the district court level, we nonetheless thought it appropriate to address the TTAB’s proposed rule changes and remind you of the opportunity to be heard on the subject. Public comment on these proposed changes are due by June 3, 2016, so if you have thoughts or input on the proposed rule changes, do not delay.
The proposed amendments to TTAB practice are all the more significant as they come just a year after the Supreme Court’s B&B Hardware decision, providing that TTAB findings can have preclusive effect in later federal court litigation. The PTO suggests that its proposed amendments, the highlights of which are outlined below, are intended to provide more efficiency in TTAB proceedings and to harmonize the TTAB’s rules to current practice and technological advances over the past several years.
A full copy of the PTO’s proposed rules changes can be found here.
Ability to Unilaterally Present Trial Testimony by Declaration or Affidavit
Under the TTAB’s existing rules, a party may only submit affidavit or declaration testimony at trial by agreement of all parties. Significantly, the proposed changes would instead allow a party the unilateral option to submit affidavit testimony without obtaining agreement—with the caveat that the adverse party will always retains the right to oral cross examination. This change could provide significant cost savings to TTAB participants by allowing them to submit affidavit testimony into evidence at trial without having to put the affiant up for deposition multiple times.
Streamlined Discovery and Pretrial Procedure…But Greater Risks for Foreign Parties
The proposed changes also make various amendments to the rules governing discovery and trial practice. First, they expressly codify the concept of “proportionality” adopted in the recent amendments to the Federal Rules of Civil Procedure, and explicitly note how the universe of electronically stored information (“ESI”) available in TTAB matters is more confined in light of the Board’s limited jurisdiction (as compared to federal district courts). In the same vein, the proposed rules adopt a limit of 75 requests for admission and production of documents, the same numerical limit currently in place for interrogatories.
In terms of trial practice, the proposed rules also move up the deadlines for filing motions to compel and motions for summary judgment. Under the existing rules, discovery and summary judgment motions must be filed at any time prior to the start of the first trial period. The proposed rules require that the same motions be filed prior to the deadline set for the plaintiff’s pretrial disclosures (usually 15 days prior to the beginning of plaintiff’s testimony period). These sensible amendments should serve to facilitate swifter resolution of TTAB cases either by settlement or on the merits by avoiding the expense and uncertainty that sometimes arises when discovery disputes erupt on the eve of trial.
Of significance to foreign parties to TTAB proceedings, the proposed rules would obligate non-U.S. entities to notify their opponent when prospective witnesses, including any officer, director, managing agent or other person “whom consents to testify on its behalf,” is expected to be present in the United States, whether during the discovery or trial phase of the proceeding. Under the current rules, TTAB proceeding participants cannot compel foreign adverse entities to appear for live depositions, instead having to undertake the largely ineffective process of serving the foreign party with a discovery deposition on written questions. The proposed amendment will undoubtedly subject foreign parties to greater risk by requiring them to provide notice and submit to live deposition if present in the U.S.
TTAB Fully Embraces the Electronic Age
Many of the proposed changes relate to moving TTAB maters forward to a fully electronic and paperless system. Since its electronic filing system came online in 2002, electronic filings now account for well over 95 percent of all TTAB filings. Seeking to expand on this trend, the proposed rules will require that all filings be electronic. They also aim to require email service for all filings and papers exchanged in TTAB cases. In exchange for immediate electronic service of filings, however, the proposed rules also explicitly remove the additional five days to provide responses where service is made by regular mail or other means.
Finally, the proposed rules shift the responsibility for serving complaints back to the Board. To assist the Board in that endeavor, the revised rules require that a cancellation petitioner include the name and email address for any attorney “reasonably believed” to be a possible representative of the subject registrant. In the event this language makes its way into the amended rules, it remains to be seen how the Board interprets this “reasonably believed” standard and how many registrants with outdated or incorrect email contact information do not receive actual notice that a cancellation proceeding was initiated against.
While the proposed rules should, if adopted, streamline TTAB proceedings, they undoubtedly present potential issue and strategy calls for brand owners in light of the significant ramifications TTAB findings have in the post B&B Hardware world.