The USPTO has adopted a number of potentially significant changes to the Trademark Trial and Appeal Board ("TTAB") Trademark Rules of Practice that will impact parties' service and disclosure obligations in inter partes proceedings. As amended, the rules will now more closely resemble the Federal Rules of Civil Procedure, including the following key respects:
- When commencing proceedings, plaintiffs must now serve pleadings directly on the defendants. Previously, an opposer, petitioner for cancellation, or concurrent use applicant would file initiating papers with the TTAB and the TTAB would forward copies to the defendants. Now, an opposer or petitioner must simultaneously serve a copy on the owner of record, attorney, or domestic representative when it files the notice of opposition or petition for cancellation. A concurrent use applicant will have to serve copies of its application on any defending applicant, registrant, or common law mark owner upon receipt of a Board notice that the concurrent use application has commenced. For opposition, cancellation, and concurrent use proceedings, the method of service is the same as for other papers served in inter partes proceedings.
- The parties must participate in a pre-discovery conference with each other, to discuss discovery issues and possible settlement, 30 days after the due date of the answer (i.e., 70 days after the institution of the proceedings). The parties may conduct the conference in person or by other means, and any party may request that a TTAB representative participate in the conference. The TTAB will not freely grant motions to extend or suspend that are filed after the answer but prior to the pre-discovery conference; the parties will most likely have to proceed to the conference. Apart from better coordinating scheduling of discovery, because most TTAB cases ultimately settle, the hope is such early meetings will encourage settlement sooner rather than later.
- The parties must make initial disclosures to each other 30 days after the opening of the discovery period (i.e., 100 days after the institution of proceedings). These initial disclosures include the identities of individuals with discoverable information that the disclosing party may use to support a claim or defense, and copies or descriptions of the category and location of all documents, data compilations, and tangible things that a party may use to support a claim or defense. A party can not seek discovery through traditional means (e.g., document requests and interrogatories) or move for summary judgment (except on grounds of claim or issue preclusion or lack of jurisdiction) until after it has made its initial disclosures. However, subject to Board approval, parties can agree to forego initial disclosures and use only traditional discovery methods. Depending on how strictly or leniently the Board enforces the new initial disclosure rules, it remains to be seen how great an impact, if any, they all have. Certainly in many federal court proceedings, initial disclosures are little more than a formality.
- The parties must make expert disclosures to each other 30 days before the close of discovery. The sequence, timing, and extent of expert disclosures may be altered by order of the TTAB or a Board-approved stipulation between the parties. Any party disclosing plans to use an expert must also notify the TTAB, which may suspend proceedings to allow for expert discovery. If, after the deadline for expert disclosures, a party decides to present expert testimony, it must request leave to do so; the TTAB will decide such requests on a case-by-case basis.
- The parties must make pretrial disclosures generally 15 days before each of their testimony periods. The Federal Rules of Civil Procedure, Rule 26(a)(3), govern such disclosures, except that a party need not disclose each document or other exhibit that it plans to introduce at trial. The parties are not required to disclose plans to file notices of reliance.
Moreover, the TTAB will impose the standard protective order in all cases. Parties must comply with the protective order’s provisions when seeking to protect confidential or otherwise sensitive information, but a party can still move for a protective order if the standard order is insufficient, and parties are free to agree to amend the standard protective order.
The TTAB also deleted the option of making submissions to the TTAB in CD-ROM format, and adopted certain clarifying and conforming amendments.
The new rules take effect on November 1, 2007, with certain amendments becoming effective on August 31, 2007. The new rules are published at 72 Fed. Reg. 42,242 (Aug. 1, 2007).