Brand owners and trademark practitioners take note: On January 14, 2017, the United States Patent and Trademark Office ("USPTO") will officially implement changes to the rules of practice before the Trademark Trial and Appeal Board ("TTAB"), including important changes to filing and service requirements, discovery protocol and limitations, evidence, and trial procedure, as well as an updated fee schedule that includes new fees for additional extensions of time to oppose.
The amendments to the Board rules are applicable to all cases pending on January 14, 2017, as well as those cases commenced on or after January 14, 2017. The changes affect many key aspects of proceedings, and attorneys and brand owners should ensure they adequately understand the amendments to the rules. In addition to the changes to Board procedure, the USPTO will implement a new fee schedule on January 14, 2017, that could potentially affect trademark prosecution and enforcement strategies.
A summary of key changes to the rules and fee schedule are highlighted below.
CHANGES TO TTAB PROCEDURE
Filing and Service
Mandatory E-Filing. All party filings must now be made through the Board's e-filing system, ESTTA. In the event of technical issues, parties may file in paper form.
Board Service of Complaints. The Board, rather than the opposer or petitioner, is now tasked with service of Petitions for Cancellation and Notices of Opposition on the defendant. Instead of paper filings, Board service of complaints will be accomplished by emailing a link to the Board's electronic case file system, TTABVUE. Default Email Service. Service of all papers must be made by email, unless otherwise stipulated.
No More Mailbox Rule. There will no longer be an additional five days (i.e., the mailbox rule) added to response periods for service by first-class mail, Priority Mail Express®, or overnight courier, in light of the Board's transition to email service. Parties should ensure they calculate all deadlines accordingly.
Time to Respond to Discovery. All discovery requests must be served early enough to allow for responses prior to the close of discovery. However, the duty to supplement discovery responses continues after the close of discovery.
Limitations on Discovery Requests. The number of requests for production of documents and requests for admission will be limited to 75 each, the same as the current limitation on interrogatories. There will no longer be an option to request leave to serve additional interrogatories.
Timing of Motions to Compel. The deadline for filing motions to compel discovery or to determine the sufficiency of responses to requests for admissions is now prior to the deadline for the plaintiff's pretrial disclosures for the first testimony period. Motions to compel initial disclosures must be filed within 30 days after the deadline for serving initial disclosures. The Board will have the ability to reset the pretrial disclosure deadline and testimony periods after resolving any motions relating to discovery and to permit time to comply with any discovery orders.
Automatic Imposition of Standard Protective Order. The proposed amendments clarify that the Board's standard protective order is automatically imposed in all inter partes proceedings. A copy of the standard protective order is available on the USPTO website.
Board Discretion Concerning Treatment of Confidential Information. The Board may treat as not confidential material that "cannot reasonably be considered confidential," notwithstanding party designations.
Timing for Summary Judgment Motions. Motions for summary judgment must be filed prior to the deadline for the plaintiff's pretrial disclosures for the first testimony period.
Use of Testimony by Declaration or Affidavit. Parties may submit witness testimony by affidavit or declaration, subject to the right of any adverse party to take and bear the expense of oral cross-examination of that witness. The offering party must make witnesses testifying by declaration or affidavit available to their adversary.
Use of Depositions. A party must file any motion to use a discovery deposition at trial along with its pretrial disclosures. All depositions must also include a word index and must be submitted in full-size, not condensed, format.
Motion for Oral Examination of Deponent. A party may file a motion for oral examination of a witness who has been noticed for deposition by written questions.
Evidence Not Disclosed in Pretrial Disclosures. An adverse party will be permitted to move to quash a notice of deposition testimony if it was not included in the pretrial disclosure or move to strike testimony presented by affidavit or declaration that was not included in the pretrial disclosure.
Notices of Reliance. Pleaded registrations and registrations owned by any party may be made of record via a notice of reliance. Internet materials may also be submitted under a notice of reliance under the proposed rules. Notices of reliance must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. Failure of a notice of reliance to meet this requirement is considered a curable procedural defect.
Evidentiary Objections and Page Limits. Evidentiary objections may be set out in a separate appendix that does not count against the page limit for a brief. Briefs exceeding the page limit will not be considered by the Board.
Involuntary Dismissal for Failure to Take Testimony. If a plaintiff has not submitted evidence and its time for taking testimony has expired, the Board may grant judgment for the defendant sua sponte, even where the plaintiff has responded to the Board's show cause order for failure to file a brief but has either not moved to reopen its trial period or not been successful in any such motion.
Procedures for Late or No Answer. The new rules clarify that when no answer has been filed, all other deadlines are tolled. If the parties have continued to litigate after an answer is late-filed, it will generally be viewed as a waiver of the technical default.
Teleconferencing. Parties, examining attorneys, and members of the Board may attend hearings remotely through video conference.
UPDATES TO USPTO FEES
In addition to the revised Board rules, on January 14, 2017, the USPTO will implement a new fee schedule. One of the most notable changes is the institution of fees for additional requests for extensions of time to file a notice of opposition, which were previously free and liberally sought by opposers.
Some of the most noteworthy fee changes are discussed below.
Paper Applications and Filings. The fees are set to dramatically increase for paper applications as part of the USPTO's shift to electronic filing. The per class fee for an initial application for registration on paper will increase from $375 to $600. Fees for other paper filings will also increase anywhere from $75 to $200 (per class, where applicable).
Electronic Applications. Fees for electronic applications submitted via the regular Trademark Electronic Application System will also increase by $75 to $400. The increase applies to requests for extension of protection and subsequent designations filed under the Madrid Protocol.
Statements of Use. The fee for electronically filing affidavits under Sections 8 and 71 will increase from $100 to $125 per class under the new rule. Fees to request an extension of time to file a statement of use, filed electronically, will decrease to $125 per class (previously $150 per class).
Complaints in Board Proceedings. Fees for electronically filing a Petition to Cancel or a Notice of Opposition will increase from $300 to $400 per class.
Extensions of Time to Oppose. Currently, extensions of time to oppose a mark may be filed without a fee and are frequently utilized by parties in Board proceedings to provide additional time for settlement discussions. Initial requests for a 30-day extension of time will remain free.
However, as of January 14, 2017, parties electronically filing a request for an extension of time under 37 C.F.R. §2.102(c)(1)(ii) (permitting a party to seek an initial 90-day extension of time for good cause) or 37 C.F.R. §2.102(c)(2) (permitting a party to request an additional 60-day extension for good cause following the issuance of an initial (free) 30-day extension of time) will be required to pay a $100 fee. Final 60-day extensions of time filed with consent, pursuant to §2.102(c)(3), will cost $200 per application.
Please note that this is not a complete list of all changes to Board procedure or fee changes.
For a more in-depth discussion of the rules (in proposed form), please review our Commentary, "USPTO Proposes Amendments to Streamline TTAB Procedure" (April 2016).
A copy of the Final Rule is available here. A correction to the Final Rule is available here. A USPTO summary of key rule changes is available here, as well as a chart highlighting changes to the rules. A summary of the fee changes is available here.