In the first update to the Trademark Rules of Practice since 2007, sweeping changes to the rules applicable to all Trademark Trial and Appeal Board (“TTAB”) proceedings take effect on January 14, 2017. The new rules apply to all proceedings pending on or after that date, including ongoing proceedings.
Notable among the rule changes are the following:
- New and Increased Fees.
- The fee for an ex parte appeal will increase from $100 to $200.
- The fee for opposition and cancellation proceedings will increase from $300 to $400 per opposed class.
- A fee will now be imposed for taking certain extensions of time to oppose, ranging from $100 to $300 depending on the length of the extension and whether the request is made electronically or on paper. A $100 fee applies to all extensions beyond the first 30 days, and an additional $200 fee applies to extensions beyond 90 days.
- An additional fee (generally, $100 above the standard fee) will be imposed for filings made by paper rather than electronically.
- Mandated Electronic Filing. The Trademark Rules of Practice previously permitted most filings to be submitted either by hard copy or electronically via the USPTO’s Electronic System for Trademark Trials and Appeals (“ESTTA”). The new rules mandate electronic filing except when technical problems or extraordinary circumstances prevent it, in which case the filing may be made on paper only if accompanied by a Petition to the Director of the USPTO and payment of a separate fee (in addition to the higher fee levied for paper filings). Filings made in respect of applications filed under Section 66(a) of the Lanham Act—i.e., applications for extension of protection of an international registration under the Madrid Protocol—still cannot be filed by paper under any circumstances.
- Service of Complaint. The current rules require the plaintiff to serve the complaint on the defendant. Under the new rules, the Board will serve the complaint.
- Mandated Electronic Service. Under the current rules, mail/courier or hand service is the default, with email or fax service permitted only with consent of the party being served. The new rules make email the default service method, permitting service by other methods only where the parties so stipulate (or if email service is not possible due to technical problems or extraordinary circumstances).
- Response Times. With the institution of mandated email service, the rule permitting five extra days for response in the case of mail service no longer applies. However, the new rules extend to 20 days the typical 15-day deadline for oppositions to motions other than summary judgment motions (the response time for which stays at 30 days).
- Codification of Strict Rules Regarding Oppositions Against Section 66(a) Applications. The new rules codify certain standards for opposing Section 66(a) applications that allegedly are implicit in the current rules as explained by TTAB decisions over the past several years. In particular, an opposition against a Section 66(a) application is limited to those goods, services and grounds set forth in the ESTTA cover sheet that is automatically generated through input made during electronic filing. The ESTTA cover sheet is determinative regardless of what is alleged in the underlying Notice of Opposition.
- Discovery. The new rules specify that “[l]imited extensions of the discovery period” may be granted; the current rules do not include the term “limited.” It is not clear what impact this change will have, if any, on the Board’s current generous granting of discovery extensions.
- Timing of Written Discovery and Responses. Under the new rules, written discovery requests (document requests, interrogatories, and request for admission) must be served sufficiently far enough in advance of the discovery deadline so that responses will be due (and must be made) no later than the close of discovery. The response deadline cannot be extended beyond the close of discovery either by stipulation of the parties or order of the Board. Therefore, discovery requests can no longer be served on the last day of discovery. Further, a party receiving document requests on the last day of possible service (that is, 30 days before the close of discovery) will be required both to provide written responses and produce the responsive documents by the close of discovery; the parties cannot stipulate to later production of documents without also receiving the Board’s approval of an extension to the discovery deadline.
- Limitations as to Written Discovery. Under the current rules, a party is limited to 75 interrogatories but may generally serve an unlimited number of document requests and requests for admission. The new rules limit the number of document requests and request for admission each to 75, unless the parties stipulate or the Board upon motion orders otherwise. The maximum number of interrogatories remains at 75.
- Timing of Discovery Motions. Under the current rules, most discovery motions must be filed only before the first testimony period opens. Under the new rules, discovery motions must be filed before the first pre-trial disclosures are due. The new rules also change the timing for motions to compel initial disclosures, which now must be filed within 30 days after the deadline for disclosure. The new rules do not change the timing for motions to compel expert disclosure, which still must be made before the close of discovery.
- Timing of Summary Judgment Motions. Under the current rules, summary judgment motions must be filed only before the first testimony period opens. Under the new rules, summary judgment motions must be filed before the plaintiff’s pre-trial disclosures are due.
- Trial Testimony by Declaration or Affidavit. The new rules permit the testimony of witnesses at trial to be submitted in the form of a declaration or an affidavit, whereas the current rules prescribed oral trial testimony unless the parties stipulated otherwise. The new rules also provide for oral cross-examination when testimony has been submitted in the form of declaration or affidavit.
The above merely highlights some of the more important rule changes, but is not a comprehensive discussion of either all the changes or their implications for opposition and cancellation proceedings going forward. If you have any questions about how these rule changes may impact ongoing or possible TTAB proceedings, please contact Fross Zelnick.