Written by: Britney Karim
The changing face of law practice will soon reflect amendments to the Trademark Rules of Practice, or more specifically, the rules put forth by the Trademark Trial and Appeals Board (TTAB). On April 4, 2016, the United States Patent & Trademark Office (USPTO) published the proposed new procedural rules in the Federal Register. [1] Accordingly, the proposed rules will go into effect on January 14, 2017, and will be applicable to cases pending on that date. [2] Further, the rules will affect all inter partes office actions filed with the USPTO, such as trademark oppositions, cancellations, concurrent use proceedings, and ex parte proceedings. [3]
The amendments are intended to benefit the public by updating the rules to current practice, overhauling references, and enhancing efficiency. The last significant change to the rules took effect in 2007. [4] Nine years later, it’s an appropriate time for the rules to catch up to the technological advances made in the past decade.
Changes to Note:
Testimony via Affidavit
Under the amendments, parties are allowed to submit witness testimony by affidavit alone. [5] The rule change is a controversial one, given that current rules stipulate that witness testimony must be taken by live deposition. The amendment appears to be a significant departure from past procedure. Some experts have expressed concerns that it may “incentivize precisely the kind of inefficient and costly board proceedings that the new rules are supposed to be fixing.” [6]
Electronic or Bust
In an effort to usher the rules into the modern, paperless world of law practice, the TTAB is requiring that all filings be electronic, with rare exceptions. The filings are to occur through the Electronic System for Trademark Trials and Appeals (ESTTA). [7] Of course, going the electronic route is not by any means groundbreaking for tech-savvy attorneys, but the mandatory email requirement for service of filings and similar electronic requirements will undoubtedly streamline the process and remove age-old inefficiencies like mailing delays. Enjoy the extra five days to respond to service by mail—before they cease to exist!
Discovery Made Efficient
The new rules limit the number of Requests for Production of Documents and Requests for Admission to 75 questions each. [7] Additionally, documents must now be served early enough so that discovery can be completed, and not just served, before the discovery period ends. In an attempt to eliminate other issues regarding delay, expense, and inefficiency, the TTAB’s new rules require that discovery disputes be resolved promptly by the close of the discovery period. [8] This replaces the current rule, which only requires that any discovery disputes be resolved prior to trial. Finally, the new rules adopt the proportionality principle found in the 2015 Amendments to the Federal Rules of Civil Procedure (FRCP), which limits discovery from discovery of relevant, non-privileged information that is “reasonably calculated to lead to the discovery of admissible evidence” (old rule, FRCP 26(b)(1)) to “proportional to the needs of the case.” (new rule, FRCP 26(b)(1)). [9]
[1] “USPTO: New Procedural Rules to Streamline TTAB Processes,” INTA Bulletin. International Trademark Association. Vol. 71, No. 8. May 1, 2016. http://www.inta.org/INTABulletin/Pages/TM_Office_Update_3_7108.aspx.
2 “Miscellaneous Changes To Trademark Trial and Appeal Board Rules of Practice,” Federal Register. Department of Commerce, Patent and Trademark Office. October 7, 2016.
3 Id.
4 Id.
5 Id.
6 Bill Donahue, “3 Big TTAB Rule Changes You Need to Know,” Law 360. April 7, 2016. http://www.law360.com/articles/781835/3-big-ttab-rule-changes-you-need-to-know.
6 Department of Commerce, Patent and Trademark Office supra note 2.
7 Eric Ball & Emily Gische, “What’s New With the Changes to the Trademark Trial and Appeal Board Rules of Practice,” IP Watchdog. October 26, 2016. http://www.ipwatchdog.com/2016/10/26/new-trademark-trial-appeal-board-rules/id=74036/.
8 Id.
9 Id.
