After a lengthy proposal and commentary process, the Trademark Trial and Appeal Board ("TTAB" or the "Board") recently published its most significant Rules of Practice update in years (see 81 Fed. Reg. 69950), with the amended Rules going into effect on January 14, 2017. These changes are intended to increase the efficiency of TTAB proceedings, clarify inconsistencies with the Federal Rules of Civil Procedure, and reflect the evolution of technology since the Board's last Rules update in 2007.
The most notable revisions to the Rules are as follows:
1. Filing and Service:
a. Mandatory Electronic Filing: All filings with the Board must now be submitted electronically through its Electronic System for Trademark Trials and Appeals ("ESTTA"), unless excused by a Petition to the Director.
b. TTAB Service to Defendant: The TTAB will now serve the initial pleading (i.e., Notice of Opposition, Petition for Cancellation, or Concurrent Use Application) on the defendant in the matter. The Board will serve the complaint in the form of a link to its electronic case file system ("TTABVUE"), rather than a forwarded copy of the complaint.
c. Mandatory Service by Email: All papers between the parties and to the TTAB must be by email. This requirement moots the previously allowed five days' response allowance for mail-service delays, and so the response time for almost motions will now be 20 days (the response time for motions for summary judgment will remain as 30 days).
2. Discovery and Pretrial:
a. Discovery Limits: Requests for Production and Admissions will now be limited to 75 each, with the option to move for additional requests upon a showing of good cause. This update is intended to reflect the Federal Rules of Civil Procedure's "proportionality" standard, under which the parties must consider the significance and cost of requested information.
b. Motions to Compel Initial Disclosures: Such motions must now be filed within 30 days of the deadline for initial disclosures.
c. Discovery Timing and Motions: Discovery must now be served early enough that responses will be provided and all discovery will be completed by the close of discovery. In this vein, discovery disputes must be "promptly" resolved following the close of discovery. Motions to compel may no longer be filed the day before trial, and motions to compel discovery or regarding responses to requests for admissions must be filed prior to the plaintiff’s pretrial disclosure deadline.
d. Summary Judgment Motions: Similarly, motions for summary judgment must also be filed before the plaintiff’s pretrial disclosure deadline, and may no longer be filed on the eve of trial.
3. Testimony and Evidence:
a. Testimony by Declaration/Affidavit: The parties may now submit trial testimony by declaration or affidavit, as opposed to only being able to do so through depositions. However, the other side retains the right to take testimonial depositions in order to cross-examine the declarant/affiant.
b. Deposition Transcripts: Deposition transcripts must now include a word index, and must be submitted in full-sized format as opposed to mini/multiple-page-view formats.
c. Notices of Reliance: Relevant registrations may now be made of record through a Notice of Reliance by submitting a current copy of the USPTO electronic database record. Internet materials may now also by submitted under a Notice of Reliance.
Trademark owners and their counsel should take note of these updates for any ongoing and future TTAB proceedings.