On January 14, 2017, several major changes to the rules governing cases before the Trademark Trial and Appeal Board (“TTAB”) will take effect. These changes apply to all cases pending on January 14, 2017 and those commenced on or after that date. Also taking effect at that time are a number of new fees and fee increases for filings in the TTAB and the United States Patent and Trademark Office (“USPTO”).
Below is a brief overview of the most notable changes, followed by some suggestions for ways to potentially reduce costs by taking action before these changes take effect:
For TTAB Cases:
New Fees for Requests to Extend Time to Oppose – for the first time, the TTAB will charge a fee for extending a deadline to oppose beyond 30 days, as follows:
- Initial 30-day extension = free
- Subsequent 60-day extension = $100
- Initial 90-day extension (instead of separate 30+60-day extensions) = $100
- Final 60-day extension on consent = $200
Under this fee structure, extending a deadline to oppose for the maximum time possible (90 days + 60 days on consent) will cost $300.
- Increased Fees for Other TTAB Filings – the TTAB will charge increased fees for the following filings, which, as discussed below, must be paid electronically:
- Notice of Opposition – increased from $300 to $400, per Class
- Petition for Cancellation – increased from $300 to $400, per Class
- Ex parte Appeal – increased from $100 to $200, per Class
- Electronic Filing Required – the TTAB will now require electronic filing of all documents. For pleadings and requests to extend time to oppose, filing on paper will be allowed only if accompanied by a Petition to Director demonstrating technical problems or extraordinary circumstances that prevented the timely filing of documents electronically. If filed on paper, the above filing fees are further increased by $100 per filing, and there is an additional $200 fee for the Petition to Director. As before, oppositions against Madrid extensions always must be filed electronically.
- Use of ESTTA Cover Sheets Required – for all Notice of Opposition and Cancellation Petition filings, the grounds must be stated in the Electronic System for Trademark Trials and Appeals (“ESTTA”) cover sheet. For proceedings against applications to extend International Registrations to the United States under the Madrid Protocol, the new rules confirm that the grounds are limited to those stated in the ESTTA cover sheet, regardless of the grounds stated in the pleading itself.
- TTAB Will Serve Notices of Opposition and Petitions to Cancel – the TTAB will now be responsible for serving Notices of Opposition and Cancellation Petitions on the other party by email, if authorized, or else by first class mail. For Cancellation Petitions, the petitioner must include registrant’s current email address, if known, in the Petition.
- Email Service of Other Documents Required – all papers in TTAB proceedings requiring service on the other party (answers, motions, discovery, etc.) must be served by email unless the parties agree otherwise. For large documents, the parties may agree to service via file hosting services, USB drive, or other similar services.
- Response Time for Motions and Reply Briefs – because all papers must be served by email, the current extra-5-day mail rule will be eliminated. Going forward, all response times will be 20 days, except for responses to summary judgment motions which remain at 30 days.
- Changes in Discovery Rules and Procedures – notable changes include the following:
- All written discovery must be served early enough so that all written discovery responses, including document production, will be complete by the close of the discovery period.
- Document Requests and Requests for Admission are now limited to 75, including subparts (Interrogatories already limited to 75).
- Motions to compel Initial Disclosures are due within 30 days after the initial disclosure deadline.
- Motions to compel based on insufficiency of discovery responses are due prior to plaintiff’s pretrial disclosure deadline.
- Responses to all written discovery are due 30 days after service (here too, the 5-day mail rule is eliminated).
- Changes in Other Trial Rules and Procedures – notable changes include the following
- A new unilateral right to submit trial testimony by declaration subject to other party’s right to take oral cross-examination at the request and expense of the adverse party. Notably, the offering party must make the declarant available.
- A Notice of Reliance must state generally the relevance of evidence and associate it with one or more issues in the proceeding. Defects may be cured.
For USPTO Filings:
In addition to the new fees and fee increases relating to TTAB cases discussed above, the USPTO will also implement the following fee changes, among others, effective January 14, 2017:
- Application Filings:
- Filed electronically through the Trademark Electronic Application System (“TEAS”) – increased from $325 to $400, per Class
- Filed on paper – increased from $375 to $600, per Class
- Notably, there is no increases for electronic filings through TEAS RF (reduced fee), $275 per Class, and TEAS PLUS (goods/services selected from USPTO ID Manual), $225 per Class
- Section 8 Affidavit / Section 71 Affidavit:
- Filed electronically through TEAS – increased from $100 to $125, per Class
- Filed on paper – increased from $100 to $225, per Class
- Extensions of Time to File a Statement of Use:
- Filed electronically through TEAS – reduced from $150 to $125, per Class
- Filed on paper – increased from $150 to $225, per Class
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Although many fees will be increasing starting January 14, 2017, the most significant fee increases can be avoided by using the USPTO electronic filing systems and eliminating paper filings altogether. This is especially true for new application filings, as there are no fee increases when using the existing reduced-fee options TEAS RF and TEAS PLUS.
For other USPTO filings, such as Section 8 Declarations and renewals, there is also a potential for savings by completing any eligible filings by January 13, 2017, before the new fees take effect.
Lastly, for TTAB cases, the new fee structure for extensions of time to oppose may provide an incentive to explore settlement early, especially where settlement may be possible within the initial free 30-day extension period, or at least before the final 60-day extension period on consent.