On August 1, 2007, the Trademark Trial and Appeal Board (TTAB) changed several procedural rules for trademark opposition and cancellation proceedings. The changes to the rules are meant to facilitate communication between parties, increase the efficiency of discovery and the exchange of pretrial information, prevent unfair surprise, and lead to earlier settlement of matters. For practitioners, the drawback is that several new steps have been added to the process, which adds more dates to the docket and may lengthen the time a proceeding takes. Also, the new rules may raise costs for cases that do not settle early, especially costs in the discovery stages of the proceedings.
While some of the changes went into effect on August 31, most are effective as of November 1. The significant changes that are already in place are: (1) The TTAB’s Standard Protective Order has been made applicable in all pending cases (except those with a different protective order already in place), which can only be modified by stipulation and motion or motion; (2) a pleaded registration may now be placed in evidence by submitting copies of the USPTO electronic database records, without the need for furnishing a certified copy; and (3) the option to file a submission in CD-ROM form has been deleted. Also effective August 31, the TTAB amended a rule to clarify that a table of contents, index of cases, description of record, statement of the issues, recitation of facts, argument and summary all count against the 25 page limit for a brief in support of a motion or in response to a motion and the limit of 10 pages for a reply brief. The TTAB also clarified the rule stating that any stipulation of parties to exceed the interrogatory limit requires approval of the Board; however, the interrogatory limit of 75 remains unchanged.
Several important changes will go into effect November 1 (and will apply to cases commenced on or after November 1):
- Service of the Complaint: The plaintiff will need to serve a copy of the initial pleading on the defendant at the time of filing, rather than file multiple copies of the complaint with the TTAB for distribution. The plaintiff will have to submit a certificate of service to the TTAB before it will grant a filing date. Whether a plaintiff should serve the trademark owner directly, or an attorney or other representative, depends on the correspondence address of record. The plaintiff is responsible for checking the Trademark Applications and Registrations Retrieval (TARR) system to obtain the correspondence address. If any service copy of the initial pleading is returned as undeliverable, the plaintiff must notify the TTAB within 10 days of receipt of the returned copy.
- Discovery Conference: The parties to an inter partes proceeding will be obligated to participate in an early discovery conference (occurring after the answer has been filed), one purpose of which is to discuss settlement. The parties can have an Interlocutory Attorney from the Board participate, if desired, which must be requested 10 days before the deadline to have the conference. Discovery will not begin until after this conference or concurrently with the conference. Also, the TTAB likely will not suspend cases for settlement discussions after the answer is filed unless the parties have held this discovery conference.
- Initial Disclosures: The parties must exchange initial disclosures similar to those required in Federal Court before they can serve written discovery or file a motion for summary judgment. These initial disclosures must identify witnesses who have discoverable information that the party may use and identify or produce documents that the parties may use to support its claims and defenses. The parties also can agree to make more extensive disclosures than those required by the rule.
- Expert Disclosures: Parties must now serve expert disclosures in accordance with Federal Rule of Civil Procedure 26(a)(2) upon the opposing party and also file the disclosure with the TTAB. Rebuttal expert disclosures are due 30 days after the adverse party’s prior disclosure. These expert disclosures are only required for testifying experts. After disclosure, the TTAB may suspend proceedings to allow for related discovery.
- Pre-Trial Disclosures: Parties must now serve pre-trial disclosures 15 days prior to the opening of testimony or rebuttal periods. Disclosure must include witness list, testimony topics and witness exhibit categories, but do not require disclosure of each document or other exhibit to be used at trial. However, materials submitted in a notice of reliance do not need to be disclosed.