On Jan. 14, 2017, the Trademark Trial and Appeal Board (TTAB) Rules of Practice were amended in what the United States Patent and Trademark Office described as an effort “to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings.” The first such amendment in roughly nine years, the new rules reflect further alignment with the Federal Rules of Civil Procedure and, more importantly, an embrace of modern technology. Below is a summary of these changes, which apply to cases pending before the TTAB as of Jan. 14 or commencing thereafter.
While this is not a drastic change from modern practice, all filings must now be made electronically through the Electronic System for Trademark Trials and Appeals (ESTTA). As discussed below, this solidification of current practice impacts service and the timing of discovery responses.
Service of all papers, including those filed with the TTAB and those served on a party and not required to be filed with the TTAB (e.g., disclosures, discovery) must now be made by email, unless the parties stipulate otherwise. If service by email is not possible due to technical issues or other “extraordinary circumstances,” the serving party must include with its submission a statement explaining why service by email was not possible and a certificate of service outlining how service was made.
Response periods are also changed, albeit nominally, in the new rules. The five-day response period extension previously provided for service by mail has been abandoned in favor of a flat 20-day response period for all submissions to the TTAB that are initiated by a date of service. Responses to motions for summary judgment and responses to discovery requests are the exceptions, with a deadline of 30 days from the date of service.
Lastly, plaintiffs will no longer serve complaints – that responsibility now falls on the TTAB, which will forward notice to defendants along with a link to TTABVUE, in which the complaint may be viewed electronically.
Changes to discovery practice are reflected in the amended rules. The TTAB has streamlined discovery consistent with the concept of “proportionality” espoused in Federal Rule of Civil Procedure 26 and already embraced in TTAB decisions. Requests for production, requests for admission and interrogatories have all been limited to 75, including subparts. Codifying what is already present in the Federal Rules, electronically stored information (ESI) and tangible things are now explicitly included as discoverable subject matter. To further curtail abuse, interlocutory attorneys may participate sua sponte in discovery conferences “when they consider it useful.”
Importantly, discovery must now be served early enough in the discovery period so that responses will be provided and all discovery completed by the end of discovery, meaning discovery requests may no longer be served on the last day of the discovery period. In an effort to mitigate “surprises” on the eve of trial, motions to compel discovery, motions to test the sufficiency of responses or objections, and motions for summary judgment must all be filed prior to the first pretrial disclosure deadline. Furthermore, motions to compel initial disclosures must be filed within 30 days after the deadline for initial disclosures.
Finally, the new rules make clear that the TTAB’s standard protective order is automatically applicable in all inter partes proceedings. Parties may proceed under an alternative order by stipulation or motion. And despite the parties’ designations, the TTAB may treat as not confidential any material that cannot reasonably be considered confidential.
In the new rules’ hallmark spirit of efficiency, witness testimony may now be submitted in the form of an affidavit or declaration, subject to oral cross-examination by the opposing party. Testimony transcripts must contain a word index. Copies of internet materials, pleaded registrations and registrations of any party may be submitted under a notice of reliance indicating the relevance of the evidence to issues in the proceeding.
Impact of the New Rules
The new rules codify many procedures that will push cases forward more quickly, by requiring practitioners to consider certain issues much earlier than they would have previously. If the amendments operate as intended, inter partes proceedings may proceed more quickly than in the past, which may in turn cause the parties to assess the potential for settlement at earlier postures of the matters.