The U.S. Patent and Trademark Office (“USPTO”) published “Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice” on October 7, 2016 (“Final Rules Notice”)[i] which contained amendments to the Trademark Rules of Practice.  These rules became effective for all cases filed and pending as of January 14, 2017 (“Amended Rules”).  The Amended Rules mark the most significant changes to practice before the Trademark Trial and Appeal Board (“TTAB”) since 2007.[ii]  Among other things, the Amended Rules change the requirements for filing and serving submissions, as well as the deadlines for taking action and responding to motions.[iii]  The Amended Rules also introduce the unilateral option to present affidavit or declaration testimony in lieu of deposition testimony, subject to the right of an adverse party to take oral cross-examination.[iv]  While many of these rule changes have drawn much of the attention, it is the changes to the discovery rules that may have the most significant impact on TTAB practice. 

 

Accelerated Discovery Timing

            Discovery is accelerated under the Amended Rules.  Under 37 C.F.R. § 2.120(a)(3), all discovery requests must be served, and all responses and objections and documents must be served and produced on or before the close of the discovery period.[v]  This is a significant change from the current rules and practice, where written discovery requests must be served before the close of discovery, but responses, documents, and objections thereto may be due and/or served after the close of the discovery period.[vi]  Moreover, the Final Rules Notice specifically states that “discovery must be served early enough in the discovery period that responses will be provided and all discovery will be complete by the close of discovery.”[vii] This is a cautionary message in the Final Rules Notice that a party should not delay propounding written discovery requests until the end of the discovery period because the responses and objections may fall due after the discovery close, and it may be difficult to show good cause to extend the discovery period under those circumstances. 

 

Limitations on Discovery Requests

            Under 37 C.F.R. §§ 2.120(d), (e), and (i), the number of document requests and requests for admissions is limited to seventy-five, counting subparts, similar to the current limitations on interrogatories.[viii]  If a party believes that the number of these discovery requests exceed seventy-five, and wishes to object to the request on this basis, it must serve a general objection on the ground of their excessive number within the response time period, instead of serving answers and objections to the specific requests.[ix] Thus, it is important to first count all written discovery requests upon receipt to make sure they comply with the limitation before drafting substantive answers and objections.  TBMP Sections 406.05(d) and 407.05(d) provide that these other requests will be counted the same way as interrogatories under the current rules, provided in TBMP Section 405.03(d).[x]

 

Authenticating Documents by Admissions

Under 37 C.F.R. § 2.120(i), a party may serve “independent of this [seventy-five] limit, one comprehensive request for admission of any adverse party that has produced documents for an admission authenticating specific documents or specifying which of those documents cannot be authenticated.”[xi] This rule requires the identification of “specific documents,” instead of a broad request for admission to authenticate “all documents produced.”  Thus, the identification of “specific documents” may require details, including the Bates Number, date, author, and subject matter of a document to be authenticated (e.g., “Admit that each of the following documents is a true and accurate reproduction of a genuine original and authentic for purposes of admission during the testimony period of this opposition proceeding: (1) Bates No., letter from Joe Smith to Frank Jones dated 1/1/01; (2) Bates No., email from Frank Jones to Joe Smith dated 1/2/01.”).  Alternatively, the identification of “specific documents” may be satisfied by a list of documents by exhibit numbers and/or Bates Numbers, including a description of the documents, and attaching a copy of the relevant documents to be authenticated organized by such numbers.

The language in 37 C.F.R. § 2.120(i) also indicates that the one comprehensive request for admission to authentic documents refers to documents that an adverse party “has produced.”  In other words, a comprehensive request for admission to authenticate documents cannot be served until an adversary has actually produced responsive documents.  This raises potential discovery timing issues, and practitioners will need to make sure document requests are served early enough in the discovery period to allow sufficient time to receive responsive documents, review them, and then prepare a comprehensive request for admission to authenticate “specific documents” to receive a response before the close of the discovery period.  Moreover, although 37 C.F.R. § 2.120(i) mentions “one comprehensive request” for admission to authenticate documents in addition to the seventy-five allowed, nothing in the Amended Rules prohibits a party from propounding other requests for admission to authenticate documents, which may be counted within the seventy-five limit.

 

Changes to Discovery Response & Motion Deadlines

            Under 37 C.F.R. § 2.120(a)(3), the deadline to respond to written discovery requests has also changed, so that responses to interrogatories, requests for production of documents, and requests for admission must be served within thirty (30) days from the date of service of such discovery requests.[xii]  Thus, the additional five (5) days previously added to account for mail delays in responding to written discovery requests is eliminated.[xiii] 

            Further, all discovery disputes must be resolved “promptly” after the close of discovery.[xiv]  Under 37 C.F.R. §§  2.120(f), a motion to compel initial disclosures must be filed within thirty (30) days after the deadline for serving initial disclosures, instead of prior to the close of the discovery period as under the current rules.[xv]  A motion to compel expert disclosures must be filed prior to the close of the discovery period, which is the same deadline under the current rules.[xvi] A motion to compel discovery or motion to determine the sufficiency of responses must be filed prior to the deadline for pretrial disclosures for the first testimony period as originally set or reset for the first testimony period.[xvii] This is a change from the current rule, where a motion to compel discovery must be filed before the commencement of the first testimony period.[xviii]  According to the Final Rules Notice, these rule changes are intended to avoid discovery disputes that erupt on the eve of trial and ensure that pretrial disclosures and trial preparation start after all discovery issues have been resolved.[xix]  In addition, as under the current rules, all of these motions must be supported by a showing that the moving party has made a good faith effort to resolve the dispute with the other party before filing the motion.[xx]

            The Amended Rules, under § 2.120(a)(2)(iv), also provide that ‘‘limited extensions of the discovery period may be granted upon stipulation or the parties approved by the Board, upon motion granted by the Board.”[xxi] Commentators urged the TTAB to remain flexible in granting extensions of the discovery period.[xxii] In response, the Final Rules Notice confirms that the “limited extensions” is not intended to set a numerical limit or stricter standard on the number of extensions granted, but rather reflects existing TTAB practice of allowing active case management.[xxiii] 

            In addition, 37 C.F.R. § 2.120(e) specifically states that discovery in TTAB proceedings covers electronically stored information (“ESI”).[xxiv]  According to the Final Rule Notice, however, the “inclusion of ESI in the rule simply recognizes that many relevant documents are now kept in electronic form.”[xxv]  The Final Rule Notice reaffirms the TTAB’s finding that electronic discovery “is generally limited in Board proceedings” “in view of the narrow scope of jurisdiction of the TTAB.[xxvi]  The Final Rules Notice also encourages the parties to produce and exchange documents in electronic form when possible.[xxvii] 

 

Final Thoughts

            The Amended Rules, including changes to the discovery rules, are effective for all cases filed and pending as of January 14, 2017.  These extensive discovery changes impact both practice and docketing of TTAB matters.