New rules for the Trademark Trial and Appeal Board (“TTAB”) go into effect on January 14, 2017, aiming to provide more efficiency and streamlining of inter partes (oppositions, cancellations, and concurrent use) and ex parte appeal proceedings. The rules apply to all proceedings active on January 14 and those subsequently filed.
Some of the key rules changes are summarized below.
Currently, testimony submitted during the testimony period requires parties to take oral depositions of their witnesses, and the opposing party has the right to a live cross-examination. Parties can offer testimony by declaration only by stipulation.
To increase efficiency and decrease costs, the new rules unilaterally allow for a party to introduce testimony by written declaration. The witness remains subject to oral cross-examination by the opposing side.
In conformance with the 2015 amendments to the Federal Rules of Civil Procedure, the new rules expressly adopt a new proportionality requirement for discovery and clarifies that discoverable items include electronically stored information as well as documents and tangible things.
Further to this proportionality objective, the new rules expressly limit the number of document requests and requests for admissions to seventy-five (counting subparts), the same limit currently in place for interrogatories. As with interrogatories, if a responding party believes that the number of requests for admissions or document production exceeds seventy-five, it may serve a general objection in lieu of responding to the individual requests.
The new rules also limit the response period for all discovery requests to thirty days. Parties no longer receive five additional days for service. This rule applies to all response periods, not only discovery.
Finally, all responses to discovery requests, including document production, must now take place within the discovery period. The old rules allowed parties to serve discovery requests up until the last day of discovery, which extended the response deadline thirty days past the discovery cutoff. The new deadline puts a stop to such practices and requires all discovery requests to be served at least thirty days prior to the close of discovery.
Filing and Service
Though the TTAB’s ESTTA electronic filing system has been the preferred filing method for some time, the new rules require all pleadings and submissions with the TTAB to be filed through ESTTA. Further, the amended rules shift responsibility for serving complaints from the filing party to the TTAB, which will electronically serve the complaint on the defendant(s).
Service of all pleadings on the opposing side, including discovery, must be made via e-mail, unless there are technical problems or extraordinary circumstances. For voluminous submissions that may not be practical via e-mail, such as document productions, the rules encourage the parties to agree on alternative methods of electronic service, such as file share sites. These changes effectively expunge the paper service requirements routinely followed in TTAB cases.